OPPOSITION Nо B 3 106 514

Voyetra Turtle Beach, Inc., Suite 100, 100 Summit Lake Drive, Valhalla, New York 10595, United States of America (opponent), represented by Nachtwey IP Rechtsanwälte, Buschhöhe 10, 28357 Bremen, Germany (professional representative)

a g a i n s t

Zhuhai AIMO Technology Co., Ltd., 1/F, Building 2, No.1, Cuizhu 4th Street, Qianshan, Zhuhai 519000, People’s Republic of China (applicant), represented by Brimondo AB, Kvarnbergsgatan 2, 41105 Göteborg, Sweden (professional representative).

On 17/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 514 is partially upheld, namely for the following contested goods:

Class 9: Photo printers; impact printers; digital colour printers for documents; ink jet document printers; document printers for use with computers; laser document printers; thermal printers; video printers.

2. European Union trade mark application No 18 151 918 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 151 918 ‘AIMO’ (word mark), namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 13 231 428 ‘AIMO’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

The goods on which the opposition is based are the following:

Class 9: Computer mouses; keyboards; computer joysticks; software; microphone headsets.

The contested goods are the following:

Class 9: Photo printers; impact printers; digital colour printers for documents; ink jet document printers; document printers for use with computers; toner cartridges, unfilled, for printers and photocopiers; laser document printers; thermal printers; ink cartridges, unfilled, for printers and photocopiers; video printers.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested photo printers; impact printers; digital colour printers for documents; ink jet document printers; document printers for use with computers; laser document printers; thermal printers; video printers are peripheral devices, connected to a computer or video camera, controlled by specific printing software such as drivers and software that manages the printing queues for job scheduling. These devices reproduce text and graphics on paper or other media by different transfer means (e.g. laser).

Software refers to a collection of programs consisting of routines, algorithms and logic that instruct devices how to perform and achieve their intended purpose. Nowadays, most printers work in close combination with printing software to achieve the intended purpose. The opponent’s goods may be essential for the use of the contested goods and, therefore, these goods are complementary. Indeed, software refers not only to the drivers required by the printing devices to connect to the different devices sending them the documents or files that have to be printed, but also to programs and applications to interpret the colours, sizes and ultimately to process the printing job following a set of security and quality parameters.

In its observations, the applicant refers to the Office’s practice regarding the lack of similarity between electronic or digital apparatus and the respective integrated software. However, contrary to the applicant’s arguments, the goods under comparison include not only software integrated in printers, but also software that could be used for example with computers, smartphones or video cameras, the purpose of which is, in general, to send commands to the integrated printer software, as envisaged by the applicant. Moreover, printer software is very often sold independently, especially when providing new or advanced technical features or functionalities for the existing software of the main device (e.g. a computer) or as additional optional software to the basic integrated printer software, or to connect a number of printers in one network, to limit or control the user’s access etc.

Therefore, the contested photo printers; impact printers; digital colour printers for documents; ink jet document printers; document printers for use with computers; laser document printers; thermal printers; video printers are similar to at least a low degree to the opponent’s software as they are complementary, target the same end users and are distributed through the same channels.

This is not the case, however, with respect to the contested toner cartridges, unfilled, for printers and photocopiers and ink cartridges, unfilled, for printers and photocopiers which are dissimilar to the opponent’s software. The mere fact that both the contested goods and the opponent’s software are, or may be used in or for, printers does not automatically justify a conclusion that they are similar. The contested goods are empty and thus are not normally sold by printer producers to the end users but rather to specialised undertakings (for the purposes of assembling/repairing printers or filling with ink). Therefore, these goods do not have the same commercial origin, target different end users and are not complementary or in competition. Moreover, they have different natures, purposes and methods of use.

The contested toner cartridges, unfilled, for printers and photocopiers and ink cartridges, unfilled, for printers and photocopiers are also dissimilar to the opponent’s computer mouses; keyboards; computer joysticks; microphone headsets. Contrary to the opponent’s arguments, similarity cannot be found since these products are not complementary or in competition and have different natures, purposes, methods of use and publics. In the absence of any evidence submitted regarding the points of sale or producers’ identity, merely the opponent’s statement that all the above goods enter into the category of computer supplies cannot lead to the conclusion that the goods in question have any relevant degree of similarity. Even if some of them may conceivably be found in the same larger retail outlets, they are not found in/on the same sections or shelves.

b) The signs

AIMO	AIMO
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs are identical and the contested goods are partly similar to at least a low degree and partly dissimilar to the opponent’s goods.

Given the identity of the signs and the similarity between the relevant goods (even if to a low degree only), there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

The applicant argues that part of the goods at issue are ‘directed only to professionals with high degree of attention’. However, the identity of the signs implies that consumers will not be able to distinguish between them. This conclusion would hold true irrespective of the degree of attention and the sophistication of the relevant public.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case the identity of the signs will counteract the at least low degree of similarity between the goods.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 231 428. It follows from the above that the contested trade mark must be rejected for the goods found to be similar to at least a low degree to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martina GALLE

Claudia SCHLIE

Angela DI BLASIO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.