OPPOSITION No B 3 117 541

Xiaomi Inc., Floor 13, Rainbow City Shopping Mall II of China Resources No. 68, Qinghe Middle Street, Haidian District, 100028 Beijing, People’s Republic of China (opponent), represented by Lane Ip Limited, The Forum, St Paul’s, 33 Gutter Lane, EC2V 8AS London, United Kingdom (professional representative)

a g a i n s t

Shenzhen Muqi Trading Co., Ltd., No.801, Nanlian Road, Nanlian Community, Longgang Street, Longgang District, 518116 Shenzhen, People’s Republic of China (applicant), represented by Ipside, 6 Impasse Michel Labrousse, 31100 Toulouse, France (professional representative).

On 22/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 117 541 is upheld for all the contested goods.

2. European Union trade mark application No 18 186 817 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 30/04/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 186 817 ‘Pocoz’ (word mark), namely against all the goods in Class 9. The opposition is based on, inter alia, international trade mark registration designating Austria, Benelux, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom No 1 456 124 ‘POCOPHONE’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. As from 01/01/2021, the United Kingdom ceased to be a Member State of the European Union. Therefore, UK marks can no longer be considered a valid basis of an opposition against a European Union trade mark application. Consequently, the opposition must be dismissed insofar as it is based on the United Kingdom designation of the earlier international trade mark registration No 1 456 124 ‘POCOPHONE’.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating France No 1 456 124 ‘POCOPHONE’ (word mark).

a) The goods and services

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

Class 9: Notebook computers; pedometers; apparatus to check franking; cash registers; mechanisms for coin-operated apparatus; dictating machines; holograms; hemline markers; voting machines; lottery machines; face recognition equipment; photocopying machines; bathroom scales; dressmakers’ measures; flashing lights [luminous signals]; smartphones; dashboard camera; cameras [photography]; measuring instruments; air analysis apparatus; speed checking apparatus for vehicles; connected bracelets [measuring instruments]; audiovisual teaching apparatus; inductors [electricity]; simulators for the steering and control of vehicles; mirrors [optics]; materials for electricity mains [wires, cables]; wafers for integrated circuits; chips [integrated circuits]; rheostats; electrical adapters; video screens; electronic key fobs being remote control apparatus; optical fibers [fibres] [light conducting filaments]; 3D spectacles; mobile power (rechargeable battery); transparencies [photography]; egg-candlers; dog whistles; decorative magnets; electric installations for the remote control of industrial operations; lightning conductors [rods]; ionization apparatus not for the treatment of air or water; fire extinguishing apparatus; radiology screens for industrial purposes; respirators for filtering air; alarms; electrified fences; electronic collars to train animals; sports whistle; portable remote control car stop; mobile software applications, downloadable; humanoid robots with artificial intelligence; tablet computers; interactive touch screen terminals; smart watches (data processing); smart glasses (data processing); computer peripheral devices; protective films adapted for smartphones; cases for smartphones; wearable activity trackers; virtual reality headsets; camcorders; headphones; cabinets for loudspeakers; biochips; sockets, plugs and other contacts [electric connections]; protective masks; wearable computer; computer software platform, recorded or downloadable; thin client computer; electronic pocket translators; computer screen saver software, recorded or downloadable; downloadable graphics for mobile phones; personal digital assistants [PDAs]; telecommunication apparatus in the form of jewellery; selfie sticks for cellphones; satellite finder meters; television apparatus; selfie lenses; teaching robots; electric wire harnesses for automobiles; anti-dazzle shades; batteries, electric; security surveillance robots; chargers for electric batteries.

Class 42: Research and development of new products for others; quality control; surveying; cosmetic research; biological research; meteorological information; vehicle roadworthiness testing; industrial design; design of interior décor; dress designing; computer software design; consultancy in the design and development of computer hardware; graphic arts design; installation of computer software; evaluation of product design; metage of goods for others; computer system design.

The contested goods are the following:

Class 9: Cabinets for loudspeakers; headphones; earphones; loudspeakers; dashboard cameras; personal stereos; eyeglass frames; spectacle frames; tripods for cameras; smart watches; radios; apparatus and instruments for recording sound; apparatus and instruments for recording of images; apparatus and instruments for recording of data; apparatus and instruments for transmitting sound; apparatus and instruments for transmitting images; apparatus and instruments for transmitting data; apparatus and instruments for reproducing of sound; apparatus and instruments for reproducing of images; apparatus and instruments for reproducing of data; apparatus and instruments for processing sound; apparatus and instruments for processing images; apparatus and instruments for processing data; optical apparatus and instruments; cinematographic apparatus and instruments; audiovisual apparatus and instruments; photographic apparatus and instruments.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 apparatus and instruments for recording sound; apparatus and instruments for recording of images; apparatus and instruments for recording of data; apparatus and instruments for transmitting sound; apparatus and instruments for transmitting images; apparatus and instruments for transmitting data; apparatus and instruments for reproducing of sound; apparatus and instruments for reproducing of images; apparatus and instruments for reproducing of data; apparatus and instruments for processing sound; apparatus and instruments for processing images; apparatus and instruments for processing data are included in the broad category of the opponent’s notebook computers. Therefore, they are identical.

The contested earphones overlap with the opponent’s headphones. Therefore, they are identical.

The contested cinematographic apparatus and instruments; photographic apparatus and instruments include, as broader categories, the opponent’s cameras [photography]. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested audiovisual apparatus and instruments include, as a broader category, the opponent’s television apparatus. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested optical apparatus and instruments include, as a broader category, the opponent’s 3D spectacles. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Headphones; dashboard cameras and smart watches are identically contained in both lists of goods (including synonyms).

The contested cabinets for loudspeakers are produced by the same manufacturers as the opponent’s headphones, they have the same distribution channels and target the same relevant public. They have the same purpose as the opponent’s headphones, to improve or enable the proper technical functioning of small electronic devices. In particular, the opponent’s headphones enable a user to listen to an audio source privately or to use a handsfree operation in relation to the relevant electronic device (i.e. cellular phones, computers, telephones or telephone communication systems). The cabinets for loudspeakers protect and store the corresponding electronic device. Therefore, they are similar to an average degree.

The contested loudspeakers are similar to the opponent’s cabinets for loudspeakers because a loudspeaker cabinet is an enclosure (often box-shaped) in which speaker drivers (e.g. loudspeakers and tweeters) and associated electronic hardware are mounted. The purpose of a loudspeaker cabinet is to provide a controlled acoustical enclosure for the drivers to operate efficiently, and to provide a physical structure to hold all the drivers in place while positioning them optimally for the listener. Indeed, a loudspeaker cannot be used without installing it in a cabinet of some type or mounting it into a wall or ceiling. Therefore, loudspeakers and cabinets for loudspeakers are complementary and target the same public. Furthermore, they coincide in producers and distribution channels.

The contested personal stereos are similar to the opponent’s tablet computers. These goods are auxiliary devices intended to be connected to computers. They may have the same distribution channels and target the same public and are normally manufactured by the same kinds of undertakings.

The contested radios are similar to the opponent’s television apparatus since they target the same consumers, are provided through the same distribution channels and are generally rendered by the same kind of undertakings (specialised in the manufacturing of audio-visual equipment).

The opponent’s 3D spectacles are optical apparatus that create the illusion of three-dimensional images by restricting the light that reaches each eye. Nowadays, this kind of glasses can also be prescribed by doctors and sold in opticians, to enable people who wear glasses to watch 3D films and sports without wearing two pairs of glasses at the same time. The opponent’s goods are therefore similar to the contested eyeglass frames and spectacle frames since although being sold separately, they can target the same consumers, can be provided through the same distribution channels and can be rendered by the same kind of undertakings.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large. Some of the relevant goods such as apparatus for recording, transmission or reproduction of sound and images, may also be directed at the professional public. The level of attention varies from average to high depending on the degree of specialisation of the goods and their price.

c) The signs

POCOPHONE	Pocoz
Earlier trade mark	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is one verbal element. However, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them, or that resemble words existing in their respective languages (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, consumers may perceive the verbal component ‘PHONE’ in the earlier mark. Indeed, the public in the relevant territory will understand it because it is a rather basic English word.

The verbal component ‘PHONE’ of the earlier sign will be associated with the short form of ‘telephone’. Bearing in mind that the relevant goods are technology/computer-related goods that may be operated or provided by using a telephone device, this verbal component is at most weak for all these goods.

The verbal component ‘POCO’ of the earlier mark is meaningless for the relevant public and is therefore distinctive to an average degree.

The contested mark ‘Pocoz’ has no meaning for the relevant public and is therefore distinctive to an average degree.

Visually and aurally, the signs coincide in the string of letters ‘POCO’ and their sound thereof. They differ in the additional verbal component ‘PHONE’ of the earlier sign which has a reduced impact on the overall perception of the signs, due to its lower distinctive character. The signs further differ in the last letter ‘z’ of the contested mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the signs are visually and aurally similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the verbal component ‘PHONE’ in the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services are at least similar, and the degree of attention will vary from average to high. The relevant public is the public at large and professionals. The earlier mark enjoys a normal degree of distinctiveness, as a whole.

The signs are visually and aurally similar on account of their coinciding letters ‘POCO’, positioned at the beginning of the signs. The remaining differing elements of the signs are considered to have a lesser overall impact on the perception of the signs, the verbal component ‘PHONE’ due to its weak character, and the letter ‘z’ since it is the last letter of the contested mark.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 456 124 ‘POCOPHONE’. It follows that the contested trade mark must be rejected for all the contested goods found to be identical and similar.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier international trade mark registration designating France No 1 456 124 ‘POCOPHONE’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Richard BIANCHI

Cristina CRESPO MOLTO

Pierluigi M. VILLANI

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.