OPPOSITION Nо B 3 125 420

Trucomp GmbH, Gewerbering 1, 85258 Weichs, Germany (opponent), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative)

a g a i n s t

Innelec Multimedia, Société anonyme, Centre d’activités de l’Ourcq 45, rue Delizy, 93500 Pantin, France (applicant), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative).

On 26/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 125 420 is upheld for all the contested goods, namely all the goods in Class 9.

2. European Union trade mark application No 18 211 814 is rejected for all the above goods. It may proceed for the remaining non-contested goods.

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

REASONS

On 01/07/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 211 814 for the figurative mark , namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 11 912 011 for the word mark ‘EM’. 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 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, 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 EUTM registration No 11 912 011.

a) The goods

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

Class 9: Data processing equipment, mice, telecommunications apparatus; machine-readable data carriers of all kinds, with and without programs; computer software.

The contested goods are the following:

Class 9: Computer software, recorded; games software; video game cartridges; peripherals adapted for use with computers; software programs for video games; video game discs; video games on disc [computer software]; video game programs; interactive video apparatus; downloadable video game programs; video monitor controllers; cell phones; telephones; hands-free kits for cell phones; peripherals adapted for use with computers.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 computer software, recorded; games software; software programs for video games; video games on disc [computer software]; video game programs; downloadable video game programs are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested peripherals adapted for use with computers (listed twice) include, as a broader category, the opponent’s mice. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cell phones; telephones are included in the broad category of the opponent’s telecommunications apparatus. Therefore, they are identical.

Machine-readable data carriers are data carriers in a form that can be read by the computer, which includes, inter alia, HDD and SSD storage drives, optical discs, magnetic tapes and discs, as well as punch cards. Consequently, the contested video game cartridges; video game discs are included in the broad category of the opponent’s machine-readable data carriers of all kinds, with and without programs. Therefore, they are identical.

The contested interactive video apparatus; video monitor controllers are included in the broad category of, or at least overlap with, the opponent’s data processing equipment. Therefore, they are identical.

The contested hands-free kits for cell phones are similar to the opponent’s telecommunications apparatus as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

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 in question.

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

EM
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark ‘EM’ is a word mark. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are depicted in upper- or lower-case letters. The earlier mark does not deviate from the usual way of writing since it is entirely written in upper-case letters, which is a fairly common way of depicting words.

The contested sign is a figurative mark composed of a device consisting of three black horizontal quadrilateral shapes followed by a device of three red vertical quadrilateral shapes. In this regard, part of the relevant public is likely to recognise and identify the contested sign as stylised letters ‘EM’. Indeed, the three black, horizontal quadrilateral bars in the figurative device, due to their position and proportions, namely a shorter middle longitudinal shape between significantly longer top and bottom longitudinal shapes, resemble the horizontal bars of a stylised upper-case letter ‘E’ and are likely to be construed as such. In addition, a part of the public may recognise a highly stylised red letter ‘M’ in the contested sign, in particular, due to the slightly shorter middle quadrilateral shape, which might lead to such an interpretation. Furthermore, consumers instinctively look for a meaning when faced with a sign and are used to recognising words, even when they are depicted with a certain degree of fancifulness, as has occurred with the element ‘EM’ of the contested sign. Therefore, given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, the Opposition Division finds it appropriate to focus the examination on the part of the relevant public that will perceive the contested sign as a stylised verbal element ‘EM’.

Although the contested sign’s stylisation and its figurative elements have a certain degree of inherent distinctiveness, from a market perspective, the letters ‘EM’ has a stronger impact on the public under examination as an indicator of origin, because consumers are used to stylisations and will perceive and refer to the figurative sign through its verbal element. 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; 19/12/2011, R 233/2011‑4 BEST TONE (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, JUMBO (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The common verbal element ‘EM’ does not convey any clear and specific meaning in relation to the relevant goods in Class 9. Therefore, it is distinctive to a normal degree.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter combination ‘EM’, which constitutes the earlier mark in its entirety and is the only verbal element of the contested sign. However, they differ in the rather embellished stylisation of the letters in the contested sign, which will not be completely overlooked or ignored by the relevant public.

Furthermore, the fact that one mark is entirely incorporated in the other mark establishes a certain degree of similarity between them (08/09/2010, T‑152/08, Scorpionexo, EU:T:2010:357, § 66; 08/09/2010, T‑369/09, Porto Alegre, EU:T:2010:362, § 26; 20/09/2011, T‑1/09, Meta, EU:T:2011:495; 28/09/2011, T‑356/10, Victory Red, EU:T:2011:543, § 26; 23/05/2007, T‑342/05, Cor, EU:T:2007:152; 10/11/2011, T‑313/10, Ayuuri Natural, EU:T:2011:653; 15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 55). In addition, the earlier mark is a word mark and the protection offered by the registration of a word mark applies to the word itself and not to the individual graphic or stylistic characteristics that the mark might possess. Therefore, it cannot be excluded that it could be stylised in a similar manner to the contested sign.

Therefore, the signs are visually similar to a below-average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘EM’, present identically in both signs. Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public under examination in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 under examination in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical and similar. They target the general and professional public and the level of attention is average to high. The degree of inherent distinctiveness of the earlier mark is normal.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The differences between the signs caused by a relatively striking and elaborate stylisation of the contested sign are insufficient to counterbalance similarities between them, since this degree of stylisation is not of such a nature as to overshadow the perception of the verbal element ‘EM’. Furthermore, two marks are similar, from the point of view of the relevant public, when they are at least partly identical as regards one or more relevant aspects (29/01/2013, T‑283/11, Nfon, EU:T:2013:41, § 41). Therefore, since the signs are visually similar to a below-average degree, aurally identical and the conceptual aspect does not influence the assessment of the similarity of the signs (which means that average consumers cannot rely on any conceptual differences in order to safely distinguish between them), the signs are sufficiently similar to lead to a likelihood of confusion between them.

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 covered are from the same or economically linked undertakings.

Considering that incorporating a new stylisation and/or additional figurative elements to a mark’s lettering is standard market practice, and given the presence of the same distinctive element, ‘EM’, in both signs, it is highly conceivable that the relevant consumers 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 public under examination. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 912 011 for the word mark ‘EM’. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed for the remaining non-contested goods.

As the earlier European Union trade mark registration No 11 912 011 for the word mark ‘EM’ 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

Liliya YORDANOVA

Anna PĘKAŁA

Lars HELBERT

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.