OPPOSITION No B 3 127 318

Huawei Technologies Co., Ltd., Administration Building Huawei Technologies Co., Ltd. Bantian, Longgang District, 518129 Shenzhen, Guangdong, People’s Republic of China (opponent), represented by Forresters, Skygarden Erika-Mann-Str. 11, 80636 Munich, Germany (professional representative)

a g a i n s t

Wild Guard Limited, Vistra Corporate Services Centre, Wickhams Cay II, Road Town, 1110 Tortola, British Virgin Islands (applicant), represented by Silvio Bergamini, Via Rosa Luxemburg 3, 41011 Campogalliano (MO), Italy (professional representative).

On 30/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 127 318 is upheld for all the contested goods.

2. European Union trade mark application No 18 228 124 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 228 124 ‘Y7’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 14 579 502 ‘Y7’ (word mark). The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR AND LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

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 European Union trade mark registration No 14 579 502.

a) The goods

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

Class 9: Communications equipment; data communications apparatus; telecommunications apparatus; computers; portable computers; tablet computers; protective cases for tablet computers; wearable computers; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; smartphones in the shape of a watch or a bracelet; smart bracelets with the functions of wireless technology for exchanging data over short distances from fixed and mobile devices and remote control for use with mobile phones which can display the caller's number and short message; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures; mobile phones; smartphones; protective cases for mobile phones; batteries for phones; earphones; headphones; audio equipment; stereos; wearable audio equipment; speakers; loudspeakers; set-top boxes; routers; wireless routers; communication software; application software; jewellery that communicate data; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 9: Smartphones; mobile phones; earphones for cellular telephones; protective cases for mobile phones; stands adapted for mobile phones; mobile phone display screen protectors in the nature of films; mobile phone battery chargers; displays for mobile phones; keyboards for mobile phones; batteries for mobile phones; wireless headsets; wireless headsets for smartphones; headsets for mobile telephones; USB cables for cellphones; power banks; cases for mobile phones; mobile phone straps; selfie sticks used as smartphone accessories; smart glasses; smart watches; smartbands; smart speakers; tablet computers; headphones; earphones; displays for smart phones; electronic chips; television apparatus; liquid crystal displays; headsets; earbuds.

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

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.

Tablet computers; smart watches; mobile phones; smartphones; protective cases for mobile phones; earphones; headphones; smartbands are identically contained in both lists of goods.

The contested smart glasses include the opponent's smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures. Therefore, they are identical.

The contested smart speakers are included in the opponent's broad category of speakers. Therefore, they are identical.

The contested wireless headsets; headsets; wireless headsets for smartphones are identical to the opponent’s headphones because they are either synonyms or the contested goods are included in the opponent’s goods.

The contested earphones for cellular telephones; earbuds are included in the opponent's broad category of earphones. Therefore, they are identical.

The contested electronic chips are included in, overlap with, the opponent's parts and fittings for all the aforesaid goods [computers]. Therefore, they are identical.

The contested batteries for mobile phones are included in the opponent's broad category of batteries for phones. Therefore, they are identical.

The contested displays for mobile phones; stands adapted for mobile phones; selfie sticks used as smartphone accessories; mobile phone display screen protectors in the nature of films; keyboards for mobile phones; headsets for mobile telephones; cases for mobile phones; mobile phone straps; displays for smart phones are included in the opponent's broad categories of communications equipment or parts and fittings for all the aforesaid goods [mobile phones; smartphones] respectively. Therefore, they are identical.

The contested mobile phone battery chargers; power banks are similar to a high degree to the opponent's batteries for phones because they coincide in relevant public, distribution channels and producer. Furthermore, these goods share a certain degree of complementarity.

The contested USB cables for cellphones are similar to the opponent's mobile phones because these goods share a certain degree of complementary, in the sense that the presence of the latter is essential for the use of the first. Also, these goods coincide in their relevant public, distribution channels and producer.

The contested television apparatus; liquid crystal displays are at least similar to the opponent's set-top boxes. A set-top box is a piece of equipment that rests on top or below of a television and receives digital television signals. These goods can have the same relevant public, distribution channels and producer. In the case of television apparatus, they can also share a certain degree of complementarity.

b) The signs

Y7	Y7
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods. Furthermore, the remaining contested goods were found to be similar to varying degrees to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods, irrespective of any considerations regarding the relevant public, its degree of attention, or the distinctiveness of the earlier mark.

As earlier European Union trade mark registration No 14 579 502 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 right 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

Martin MITURA

Andrea VALISA

Solveiga BIEZA

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.