OPPOSITION Nо B 3 124 150

 

Tritec Electronic AG, Carl-Zeiss-Str. 41, 55129 Mainz, Germany (opponent), represented by Rheinpatent Kodron & Mackert, Hindenburgplatz 3B, 55118 Mainz, Germany (professional representative) 

 

a g a i n s t

 

Shenzhen Tritek Limited, Room 301, No. 2-1, Shunkang Street, Liulian Community, Ping Shan Street, Ping Shan District, 518118 Shenzhen, People’s Republic of China (applicant), represented by Alexandrou & Varoudakis Llc, 41, Misiaouli Kavazoglou, Mithridiates Business Center, 2nd Floor, 3016 Limassol, Cyprus (professional representative).

On 11/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 124 150 is partially upheld, namely for the following contested goods:

 

Class 9: readers [data processing equipment]; integrated circuit cards [smart cards]; USB flash drives; interactive touch screen terminals; cables, electric; wires, electric; printed circuits; printed circuit boards; chargers for electric batteries; battery chargers; batteries, electric; accumulators, electric; computer software applications, downloadable; computer programs [downloadable software]; microprocessors; computer software, recorded; computer operating programs, recorded.

2.

European Union trade mark application No 18 212 509 is rejected for all the above goods. It may proceed for the remaining goods.

3.	Each party bears its own costs.

 

REASONS

 

On 16/06/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 212 509 ‘TRITEK’ (word mark). The opposition is based on European Union trade mark registration No 3 570 215, (figurative 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.

a) The goods

 

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

 

Class 9: computers, computer parts and accessories, namely computer software (included in class 9) fixed disks, monitors, drives of all kinds, networks of all kinds, printers, computer plug-ins, memory modules, CPU modules, displays, external drive systems, external storage systems of all kinds, modems, telecommunications equipment, keyboards and mice, human and machine input and output equipment, storage systems and electromagnetic-wave transmission systems.

The contested goods are the following:

 

Class 9: readers [data processing equipment]; integrated circuit cards [smart cards]; USB flash drives; interactive touch screen terminals; cell switches [electricity]; control panels [electricity]; cables, electric; wires, electric; printed circuits; printed circuit boards; connections for electric lines; couplings, electric; wire connectors [electricity]; batteries, electric, for vehicles; battery boxes; batteries for lighting; anode batteries; chargers for electric batteries; battery chargers; batteries, electric; accumulators, electric; solar batteries; solar panels for the production of electricity; charging stations for electric vehicles; computer software applications, downloadable; computer programs [downloadable software]; microprocessors; computer software, recorded; computer operating programs, recorded.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 USB flash drives are included in the opponent's broad category of drives of all kinds and the contested interactive touch screen terminals are included in the opponent's broad category of displays. Similarly, the contested printed circuits; printed circuit boards; microprocessors are included in, or overlaps with, the opponent's broad category of CPU modules which covers the components of the central processing units. Therefore, they are identical.

The contested readers [data processing equipment] and integrated circuit cards [smart cards] are similar to the opponent's CPU modules because they coincide in producer, end user and distribution channels.

The contested cables, electric and wires, electric include electric data transmission cables and wires and therefore they are similar to the opponent's telecommunications equipment, as they coincide in producer, end user and distribution channels. Similarly, the contested chargers for electric batteries; battery chargers; batteries, electric; accumulators, electric are similar to the opponent’s telecommunications equipment as it is usual for the manufacturer of such goods to also manufacture and sell, for example, battery chargers, accumulators and batteries. It also has to be considered that, for example, battery chargers and batteries for mobile phones are not only sold together with the goods as a package, but can also be purchased independently to cover a multitude of situations. Therefore, they coincide in their origins, distribution channels and targeted consumers. Moreover, they are complementary to each other.

The contested computer software applications, downloadable; computer programs [downloadable software]; computer software, recorded; computer operating programs, recorded are similar to a low degree to the opponent's computer software (included in class 9) fixed disks which entails hard drives. Indeed, there is a close correlation between computer software and the recording devices, such as hard drives, as they very often come with their own integrated software. Therefore, the reality in the market is that consumers are likely to believe that these goods could coincide in origin or producer. Therefore, they coincide in producer, end user and distribution channels.

The contested cell switches [electricity]; control panels [electricity]; connections for electric lines; couplings, electric; wire connectors [electricity]; batteries, electric, for vehicles; battery boxes; batteries for lighting; anode batteries; solar batteries; solar panels for the production of electricity; charging stations for electric vehicles are apparatus and instruments used for the production, storage and transmission of energy and/or electricity and they are dissimilar to all goods covered by the opponent's right, consisting of computers, their parts and accessories and telecommunications equipment. The compared goods have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

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 to varying degrees are directed at the public at large, as well as 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 those goods, the frequency of purchase and their price.

c) The signs

 

	TRITEK
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 differing elements ‘ELECTRONIC’ and ‘AG’ of the earlier sign are meaningful, at least, for the German-speaking public in the relevant territory. ‘ELECTRONIC’ will be understood as related to electronics (information extracted from Duden Dictionary on 04/06/2021 at https://www.duden.de/suchen/dudenonline/electronic). Taking into account the relevant goods, it is non-distinctive. The term ‘AG’ is an abbreviation which will be immediately grasped by the German public as the type of the legal entity meaning ‘limited liability company’ and therefore it is also a non-distinctive element. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public for which these differing terms will barely have an impact on the overall perception of the sign.

The earlier mark, which is a figurative mark, contains a verbal element ‘TRITEC’ depicted in a stylised bold typeface, which is meaningless and therefore distinctive to an average degree. The mark additionally composes of a red triangle that is depicted as part of the first letter ‘T’. The letter ‘T’ inside of the triangle is depicted in white. The triangle is a basic geometric shape that is totally commonplace and, therefore, has a very limited distinctiveness. The verbal elements ‘ELECTRONIC’ and ‘AG’ are depicted in a significantly smaller and standard typeface and due to their small size and positioning play a secondary role within the sign.

The graphical depiction of the earlier mark has a purely decorative nature. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign 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).

As the element ‘TRITEC’ in the earlier mark is most eye-catching due to its size and prominent position it is dominant. Furthermore, as stated above, it is the most distinctive element of the sign for the relevant public.

The contested sign is a word mark ‘TRITEK’ which has no meaning for the relevant public and is, therefore, distinctive to an average degree.

Visually, the signs are highly similar given the fact that the contested sign differs only in one letter from the most dominant and distinctive element of the earlier mark. The signs additionally differ in elements that have less impact due to their decorative nature or non-distinctive and/or secondary character.

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

Aurally, consumers tend to shorten marks containing several words. As the non-distinctive elements ‘ELECTRONIC’ and ‘AG’ will be perceived as playing a secondary role within the sign, the public under analysis will refer to the earlier mark by the verbal element ‘TRITEC’. Therefore, and taking into account that for the German public there is no difference in the pronunciation of the differing letter ‘C’ and ‘K’, the signs are aurally identical.

Conceptually, although the public in the relevant territory will perceive the meanings of the elements of the earlier mark as explained above, the concept of the earlier lies in elements that cannot help the consumer differentiate the signs and 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.

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 some non-distinctive or purely decorative elements in the mark, as stated above in section c) of this decision.

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).

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).

Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in this mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with 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 goods concerned are partly identical, partly similar to varying degrees and partly dissimilar. The degree of attention of the relevant public, composed of average consumers and professionals, varies from average to high.

As described under c) of the decision the signs basically differ in one letter in their (most) distinctive component. Given that the additional elements of the earlier mark are non-distinctive or of purely decorative nature, they do not allow to differentiate the signs, especially given the imperfect recollection of the consumer.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees to those of the earlier trade mark, even for those goods found to be similar only to a low degree. Indeed, applying the aforementioned principle of interdependence, it is considered that the similarities between the signs are sufficient to offset the low degree of similarity between some of the goods.

 

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) 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

 

 

Inés GARCIA LLEDO

Cynthia DEN DEKKER

Rosario GURRIERI

 

 

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.