OPPOSITION No B 2 006 354

Next Retail Limited, Desford Road, Enderby, Leicester LE19 4AT, United Kingdom (opponent), represented by Marks & Clerk LLP, 90 Long Acre, WC2E 9RA London, United Kingdom (professional representative)

a g a i n s t

Cord-IT Limited, Flat A, 5/F, Contempo Place, 81 Hung To Road, Kwun Tong, Kowloon, Hong Kong (applicant), represented by Cabinet Chaillot, 16-20, avenue de L'Agent Sarre, 92703 Colombes Cedex, France (professional representative).

On 21/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 006 354 is upheld for all the contested goods and services.

2. European Union trade mark application No 10 437 408 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 437 408 for the figurative mark , namely against all the goods and services in Classes 9 and 35. The opposition is based on, inter alia, European Union trade mark registrations No 6 621 049 (TM 1) and No 1 620 434 (TM 2), both for the word mark “NEXT”. The opponent invoked in regard to those rights Article 8(1)(b) and Article (5) 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 aforementioned opponent’s trade mark registrations.

a) The goods and services

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

TM 1:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus, parts and fittings for all the aforesaid goods; sunglasses; spectacles; spectacle frames; cases for spectacles and sunglasses; calculators; electronic organisers; cameras; battery chargers; camcorders, time recording devices; cassette players; compact disc players; DVD players; MP3 players excluding MP3 docking stations; televisions; amplifiers; printers; computers; computer games; computer peripheral devices excluding standalone speakers; radios; telephones; satellite navigational apparatus; weighing machines; magnetic encoded cards; floats for bathing and swimming; protective clothing; protective helmets; buoyancy aids; swimming floats; reflective clothing for the prevention of traffic accidents; none of the aforesaid goods including speaker docks or standalone speakers.

TM 2:

Class 35: Retail services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras; the bringing together for the benefit of others of a variety of goods including the aforesaid products; enabling customers to conveniently view and purchase these goods; services for the retail of products through high street stores, via mail order catalogues or over the Internet; providing on-line retail store services in the field of the aforesaid goods; information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods; on-line trading services, trading services in respect of a wide range of goods; excluding modelling agency services.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus; battery boxes; computer peripheral devices; chargers for electric batteries; converters, electric; headphones; inverters [electricity]; peripheral devices (Computer -); switchboxes [electricity]; switches, electric; transformers [electricity].

Class 35: Retailing and wholesaling services in the field of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, battery boxes, computer peripheral devices, chargers for electric batteries, electric converters, headphones, inverters [electricity], switchboxes [electricity], electric switches, transformers [electricity]; auctioneering; online retailing and wholesaling services in the field of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, battery boxes, computer peripheral devices, chargers for electric batteries, electric converters, headphones, inverters [electricity], switchboxes [electricity], electric switches, transformers [electricity]; advertisements; online advertising services.

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

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Contested goods in Class 9

The contested scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus include as broader categories the opponent’s scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; none of the aforesaid goods including speaker docks or standalone speakers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods they are considered identical to the opponent’s goods.

Likewise, the contested computer peripheral devices; peripheral devices (Computer‑) include as broader categories the opponent’s computer peripheral devices excluding standalone speakers; none of the aforesaid goods including speaker docks or standalone speakers. Therefore, they are identical.

The contested chargers for electric batteries; battery boxes; converters, electric; inverters [electricity]; switchboxes [electricity]; switches, electric; transformers [electricity] overlap with the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (none of the aforesaid goods including speaker docks or standalone speakers). Therefore, they are identical.

The contested headphones are included in the broad category of the opponent’s apparatus for transmission or reproduction of sound (none of the aforesaid goods including speaker docks or standalone speakers). Therefore, they are identical.

Contested services in Class 35

The contested retailing services in the field of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, battery boxes, computer peripheral devices, chargers for electric batteries, electric converters, headphones, inverters [electricity], switchboxes [electricity], electric switches, transformers [electricity]; auctioneering; online retailing services in the field of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, battery boxes, computer peripheral devices, chargers for electric batteries, electric converters, headphones, inverters [electricity], switchboxes [electricity], electric switches, transformers [electricity] are considered similar to the opponent’s retail services in the fields of clothing, headgear and footwear. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

The contested wholesaling services in the field of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, battery boxes, computer peripheral devices, chargers for electric batteries, electric converters, headphones, inverters [electricity], switchboxes [electricity], electric switches, transformers [electricity]; auctioneering; online wholesaling services in the field of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, battery boxes, computer peripheral devices, chargers for electric batteries, electric converters, headphones, inverters [electricity], switchboxes [electricity], electric switches, transformers [electricity] are considered similar to the opponent’s retail services in the fields of clothing, headgear and footwear. Wholesaling is selling goods to other undertakings (retailers) which then sell the goods to end consumers. Even though the relevant public and distribution channels are different, these services have the same nature and purpose. Moreover, wholesalers sometimes also provide retail services and thus, the commercial origin of these services can be the same.

Before proceeding with the comparison of the remaining contested service, namely advertisements; online advertising services the Opposition Division notes the following.

Advertising essentially consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity.

Business management are services intended to help in the management of the business affairs or commercial functions of an industrial or commercial enterprise. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to allocate financial and human resources efficiently, how to improve productivity, how to increase market share, how to deal with competitors, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products etc.

Considering the above the contested advertisements; online advertising services are similar to a low degree to the opponent’s business management consultancy (including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods) as they have the same purpose, usually coincide in producer and relevant public.

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 and services found to be identical or similar (to various 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 price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

NEXT
Earlier trade marks	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 trade marks are both word marks, consisting of the word ‘NEXT’ which is meaningful in certain territories, for example in those countries where English is understood and spoken. Due to this, the similarities between the signs will be higher. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as consumers in the United Kingdom, Ireland and Malta.

The contested sign is a figurative mark consisting of a verbal element ‘KONNEXT’ written in stylized black capital letters while the two letters ‘N’ are stylized more than the remaining letters in that sign. They are written in a wavy manner, with one leg missing each and although interlinked, there is a space between them. Due to this stylization, which is striking and will draw the attention of the relevant public, the verbal element ‘NEXT’ will be easily recognized in the contested sign.

Moreover, it has to be recalled that although the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, 'the fact remains that, when perceiving a verbal sign, they 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, 06/10/2004, T-356/02, Vitakraft, EU:T:2004,ECR II-3445, § 51). In the case at hand, it can be reasonably assumed that the relevant public will clearly perceive the element ‘NEXT’ in the coined word ´KONNEXT´. The beginning ´KON´ will not be attributed any meaning and is distinctive.

The common verbal element ‘NEXT’ means as 1) as an adjective: (of a time) coming immediately after the time of writing or speaking; coming immediately after the present one in order, rank, or space; 2) as an adverb: on the first or soonest occasion after the present; immediately afterwards; (with superlative) following in the specified order; 3) as a noun: the next person or thing; 4) as a preposition: (archaic) next to or 4) as a determiner: (a next), West Indian, another (see e.g. https://en.oxforddictionaries.com/definition/next). None of those meanings have any immediate conceptual relation to the goods and service in question and, consequently, the verbal element ‘NEXT’ is considered distinctive.

Visually, the signs coincide in the verbal element ‘NEXT’, which constitutes entirely the earlier marks. The signs differ in their stylisations as well as in the additional first three letters ‘KON’, placed at the beginning of the contested sign, which have no counterpart in the earlier marks. While it is settled case law that consumers tend to focus their attention on the beginnings of trade marks, it must likewise be recalled that this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs.

Since the element ‘NEXT’, which constitutes entirely the earlier marks, is clearly recognizable in the contested sign, the Opposition Division finds the signs at issue visually are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‛NEXT’ present identically in all signs. The pronunciation differs in the sound of the first three letters ‘KON-’ in the contested sign. The fact that this combination of the letters is placed at the beginning of the contested sign, where consumers normally focus their attention, is in the case at hand mitigated due to the fact that because of the sign’s stylization, there will be a drop in the intonation, a pause, after the first syllable ‘KON’, when pronounced, followed by stronger sound of the second syllable ‘NEXT’, especially considering that the letter ‘X’ creates a stronger sound than the remaining letters.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Considering the above findings regarding the recognition of the element ‘NEXT’ in the contested sign and bearing in mind that despite the presence of the first three letters ‘KON’, the relevant public be still aware of the semantic content of the word ‘NEXT’ when perceiving that sign as a whole, the signs are conceptually similar to a high degree.

The applicant explains that the contested sign will evoke different words such as ‘context’, ‘connect’, ‘connexion’ or ‘convex’. However, the Opposition Division finds that on account of the differences in the spelling of such words in English and the stylisation of the letters N which will contribute to the easy recognition of the verbal element ‘NEXT’ in the contested sign, the relevant public will be rather be prompted to perceive the concept of the word ‘next’ and not the meanings suggested by the applicant.

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 marks

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 marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

In the present case, the contested goods and services have been found identical or similar (to various degrees) to the opponent’s goods and services and are directed at the public at large and professionals whose degree of attention is deemed to be from average to high.

The marks at issue are similar due to their coincidence in the verbal element ‘NEXT’, which constitutes the earlier marks and is fully included in the contested sign. As already pointed out above, due to the stylization of the letters ‘N’ in the contested sign and the fact that when perceiving a verbal sign, the consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know, the element ‘NEXT’ will be clearly perceived in the contested sign and this despite the presence of the letters ‘KON’ at its beginning.

While the differences between the signs at issue will not be overlooked, they are not sufficient to counteract the visual, aural and conceptual similarity between the two signs, and as such do not allow the consumers, even in case of high level of attention, to distinguish between them safely.

Account has to be also 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; (16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 48 and case-law cited).

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

Therefore, the opposition is well founded on the basis of the opponent’s aforementioned European trade mark registrations. It follows that the contested trade mark must be rejected for all the contested goods and service (even if similar to a low degree only).

As the aforementioned earlier rights lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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 successful on the basis of the inherent distinctiveness of the earlier marks, there is also no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Besides, 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 grounds of the opposition, namely Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR, Article 8(4) and (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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Denitza STOYANOVA-VALCHANOVA

Renata COTTRELL

Tu Nhi VAN

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.