OPPOSITION Nо B 3 120 354

 

SC CLARFON SA, Str. Nicolae Filipescu nr. 39-41, sector 2, Bucharest, Romania (opponent), represented by Elena Grecu, 12-14 Pictor Ion Negulici Street, District 1, 011941 Bucharest, Romania (professional representative) 

 

a g a i n s t

 

Kanex Ltd., Dimitar Manov 22, Bl. 45a Ent. A, App. 6, 1408 Sofia, Bulgaria (applicant).

On 29/06/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 120 354 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 193 604 is rejected in its entirety.

 

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

REASONS

 

On 13/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 193 604 (figurative mark). The opposition is based on, inter alia, Romanian trade mark application No 2 019 02 849 and registration No RO502019000027361, ‘Clarfon’ (word mark). 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.

 

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 Romanian trade mark application No 2 019 02 849 and registration No RO502019000027361.

a) The goods

 

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

 

Class 9: Audiovisual apparatus and instruments; apparatus and instruments for recording, transmission, reproduction or processing of sound, images or data; stored or downloadable data carriers, computer software, digital or analog storage media; computers and computer peripherals.

The contested goods are the following:

 

Class 9: Wireless headphones; wireless headsets for smartphones; music headphones; in-ear headphones; wireless headsets for tablet computers; headsets for use with computers; headsets for mobile telephones; stereo headphones. 

Contrary to the applicant’s view, the contested wireless headphones; wireless headsets for smartphones; music headphones; in-ear headphones; wireless headsets for tablet computers; headsets for use with computers; headsets for mobile telephones; stereo headphones are included in the opponent's broad category of apparatus and instruments for reproduction of sound. Therefore, they are identical.

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 are directed at the public at large. The public’s degree of attention is average.

c) The signs

Clarfon
Earlier trade mark	Contested sign

  

The relevant territory is Romania.

 

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 mark is a word mark ‘Clarfon’ while the contested sign is a figurative mark, which contains the stylised verbal element ‘Clartone’ in the colour white on a black background, with a round white line encompassing the verbal element. 

 

As regards the marks under dispute, although they are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The element ‘Clar’ contained in both signs will be understood as ‘clear’ by the relevant public, as noted by the opponent. However, contrary to the opponent´s arguments, considering that the relevant goods are related to sound apparatus this element is weak, namely for wireless headphones; wireless headsets for smartphones; music headphones; in-ear headphones; wireless headsets for tablet computers; headsets for use with computers; headsets for mobile telephones; stereo headphones of the contested mark and for the opponent's broad category of apparatus and instruments for reproduction of sound, as it would be perceived as indicating the quality of the said goods. 

 

The element ‘fon’ contained in the earlier mark will be associated with a ‘measuring unit for the level of intensity of sounds’ (see the online dictionary Dexonline at https://dexonline.ro/definitie/fon, consulted on 21/06/2021) which due to its technical meaning would not be perceived as such by the public at large. However, since the element ‘fon’ is also commonly used as an element to form words that are sound related, the public at large would understand ‘fon’, to this extent, as relating to sound apparatus. Nevertheless, as a whole, the sign ‘Clarfon’ is an invented term and has no meaning. It is, therefore, distinctive.

 

The element ‘tone’ contained in the contested sign does not exist as such in Romanian. However, at least a part of the public will associate the word ‘tone’ with the Romanian word ‘ton’ which refers to, among others, a ‘sound made by a source that vibrates or the tonality of a musical piece’ (see the online dictionary Dexonline at https://dexonline.ro/definitie/ton, consulted on 21/06/2021) due to their resemblance. Since the relevant goods are related to sound apparatus, this element would be perceived as weak by this part of the public. Nevertheless, despite the fact that the contested sign is comprised of two verbal elements that would be perceived as weak by the relevant public, the mark as a whole has no meaning, being an invented word and therefore, it is distinctive.

Furthermore, the contested sign is composed of a stylised verbal element and less distinctive figurative element consisting of a circle around the verbal element which has a purely decorative nature. In addition, the contested sign has no element that could be considered clearly more dominant than other elements. 

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

 

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.

 

Visually and aurally, the signs coincide in the letters/sounds ‘Clar*on*’. The signs differ in the letter/sound ‘f’ contained in the earlier mark and in the letters/sounds ‘t’ and ‘e’ in the contested sign. The beginning of the signs are visually and phonetically identical while the elements ‘fon’ and ‘tone’ are visually and phonetically similar as they have a similar intonation and rhythm. As addressed above, these elements would be perceived as weak in relation to the goods by the relevant public. Furthermore, the contested sign is a figurative mark with a stylised word element and a round device around it that serves a decorative purpose. These elements have no counterpart in the earlier mark.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the relevant public, as both signs contain the element ‘Clar’, the signs are conceptually similar to at least a low degree, taking into account the different elements ‘fon’ in the earlier mark and ‘tone’ in the contested sign.

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.

 

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

 

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 weak elements in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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, Sabel, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical and target the public at large whose degree of attention is average in relation to the goods in question. The earlier mark has a normal degree of distinctiveness for the relevant public.

The signs are visually and aurally similar to an average degree and conceptually similar at least to a low degree for the relevant public.

In its observations, the applicant argues that there are semantic differences between the elements ‘fon’ of the earlier mark and ‘tone’ in the contested sign since these elements convey different meanings, which would result in the conceptual dissimilarity of the signs under dispute.

The Opposition Division took note of the semantic differences between these elements as explained above. However, it should be noted that these elements would be found to be weak in relation to the goods, being sound apparatus. Furthermore, both signs coincide in the element ‘Clar’ which has a meaning in Romanian, as duly explained above. Despite both marks containing weak elements, the signs under dispute are both meaningless as whole in the relevant territory and therefore they are distinctive. Having these facts into account, the applicant´s claim must be set aside.

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 this case, the identity of goods clearly offsets the differences between the signs.

 

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.

 

Considering all the above, there is a likelihood of confusion on the part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark No  RO502019000027361. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier right 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).

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

 

 

Andrea VALISA

Inês RIBEIRO DA CUNHA

Fernando AZCONA DELGADO

 

 

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.