OPPOSITION No B 2 218 264

Delta Electronics, Inc. 186 Ruey Kuang Road Neihu, Taipei 114, Republic of China (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

7thSense Design Limited, 2 The Courtyard, Shoreham Road, Upper Beeding, West Sussex BN44 3TN, United Kingdom (applicant), represented by Dehns, St Bride’s House, 10 Salisbury Square, London EC4Y 8JD, United Kingdom (professional representative).

On 16/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 218 264 is upheld for all the contested goods.

2. Community trade mark application No 11 538 808 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 of Community trade mark application No 11 538 808. The opposition is based on Portuguese trade mark registration No 378 296 for the figurative mark and Community trade mark application No 10 662 021 for the figurative mark . The opponent invoked Article 8(1)(b) CTMR.

PROOF OF USE

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based. The request was filed in due time. However, it is not admissible since the opponent’s Portuguese trade mark was registered for less than five years prior to the publication of the contested application while the other right was, at the moment of the request, an application. It follows that the request regarding these rights is inadmissible.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 Portuguese trade mark registration No 378 296.

1. The goods

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

Class 9: Programmable temperature controller, optical encoder; programmable logic controller, variable speed AC motor drive, AC motor drive, frequency inverter; human machine interface device, operation interface terminal; optical sensor; optical switch; telecommunication power systems/rack power system for telecommunication; switching power supplies; uninterruptible power systems (UPS); DC‑DC converter; switch mode rectifier; broad mount power; control and supervisory units; charger; monitor (including TV monitor; LCD monitor; computer monitor; colour monitor) battery control and supervisory units; power distribution units; AC distribution units; DC distribution units; AC/DC adapter; DC/AC inverter; electronic ballast; oscillators; DC‑DC converters; components and equipment for computer networking; ignition coil; DC fan; AC fan; crossflow fan; transformers; RF/microwave components and modules; chip inductor; inductor; high-frequency electromagnetic interference common mode choke; fibre optical transceiver module; fan controller and DC drive; cooler; DC brushless spindle motors and steppers; EMI/RFI; EMI/RFI filter; fibre optical passive components; radio frequency/microwave amplifiers; optical components; DSL splitters; LCD TV; POP TV; LCD monitor; CRT monitor; PDP monitor; medical imaging system; LCD projector; DLP projector.

The contested goods are the following:

Class 9: Media playback systems; 3D graphics software; software for playback and interaction for use within science centres, planetariums or the theme parks, retail and museum industries; real-time software, network software, software ancillary to any of the aforesaid; computer network systems; image processing and manipulation software; software and hardware for the broadcast, multi-media, TV and film industries; analysis software for visual display systems.

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 (see, inter alia, judgment of 29/09/1998, C‑39/97, ‘Canon’).

The contested hardware for the broadcast, multi-media, TV and film industries includes, as a broader category, the opponent’s monitor (including TV monitor; LCD monitor; computer monitor; colour monitor). It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical.

The contested media playback systems are systems (actual hardware media players or computer programs or applications) to create various forms of media, such as audio and video. These systems need to be compatible with LCD monitors in order to function. Therefore, the contested media playback systems are complementary to the opponent’s monitor (including TV monitor; LCD monitor; computer monitor; colour monitor). Moreover, they can be offered in the same outlets and provided by the same manufacturers. Therefore, they are highly similar.

A computer network connects computers, peripheral equipment, servers, etc. In order to build a computer network various pieces of equipment are required - both software and hardware. Considering this, the contested computer network systems are highly similar to the opponent’s components and equipment for computer networking, since the latter form part of and create a computer network system. Therefore, these goods are complementary; they target the same consumers and can be provided by the same producers. Furthermore, it is common for these goods, both computer networks as such and the parts creating them, to be distributed through the same commercial channels. The same reasoning applies to the contested network software. Therefore, these goods are also highly similar.

The remaining contested software, namely 3D graphics software; software for playback and interaction for use within science centres, planetariums or the theme parks, retail and museum industries; real-time software, software ancillary to any of the aforesaid; image processing and manipulation software; analysis software for visual display systems; software for the broadcast, multi-media, TV and film industries are similar to the opponent’s monitor (including TV monitor; LCD monitor; computer monitor; colour monitor) since all the abovementioned software can be used with peripherals. For example, 3D graphics software or the software for image processing and manipulation need to be used together with peripherals such as monitors in order to function correctly. Therefore, these goods are complementary and can be offered through the same distribution channels and target the same consumers.

2. The signs

	DELTA MEDIA SERVER
Earlier trade mark	Contested sign

The relevant territory is Portugal.

Although the earlier mark is stylised, it is reasonable to assume that at least the majority of consumers will perceive the letters as forming the word ‘DELTA’.

Visually, the signs are similar to the extent that they coincide in the word ‘DELTA’ and they differ in the second and third element of the contested sign ‘MEDIA SERVER’, and also in the stylisation of the opponent’s mark.

Aurally, the pronunciation of the signs coincides in the word ‘DELTA’ and differs in the additional words ‘MEDIA SERVER’ of the contested sign.

Conceptually, the word ‘DELTA’ will be perceived as either ‘the name of the fourth letter in the Greek alphabet’ or ‘the flat alluvial area at the mouth of some rivers where the mainstream splits up into several distributaries’. It cannot be excluded that a part of the relevant public will recognized the expression ‘MEDIA SERVER’ of the contested mark as making reference to a computer or program that supplies data or resources to other machines on a network related to means of communication that reach large numbers of people, such as television, newspapers, and radio. This is because these two words are equivalent (MEDIA) or very similar (‘Servidor’ to ‘Server’) to their Portuguese version and also considering the goods in Class 9.

In view of the foregoing, the signs are conceptually similar to the extent that both refer to the concept related to the word ‘DELTA’.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

As stated in section b), the element ‘MEDIA SERVER’’ of the contested sign may be associated with the idea of a computer or program that supplies data or resources to other machines on a network related to means of communication

Since the contested goods refer to media/network systems, it is considered that these two words are weak, given that they can refer to an essential characteristic and quality of the goods. The public understands the meaning of these elements and will not pay as much attention to them as to the other, more distinctive element of the mark, namely the word ‘DELTA’. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

The earlier mark has no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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.

5. 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.

Although some of the goods, such as media playback systems and monitors, are directed at both non-professional and professional consumers, other goods, such as software for playback and interaction for use within science centres, planetariums or the theme parks, retail and museum industries are specialised goods mainly directed at business customers with specific professional knowledge or expertise. For all the goods, the degree of attention is assumed to be average or higher than average.

6. Global assessment, other arguments and conclusion

The marks are visually and aurally similar as a result of the coinciding word ‘DELTA’. In addition, ‘DELTA’ is the first element in both marks. In this respect, it should be noted that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark.

As regards the differences resulting from the stylisation of the earlier mark, where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered of more importance than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 14/07/2005, T‑312/03, ‘Selenium-Ace’, paragraph 37). Therefore, the verbal element ‘DELTA’ has a stronger impact when assessing the likelihood of confusion between the marks.

The second and third element of the contested sign, namely the words ‘MEDIA SERVER’ are considered weak for the contested goods. Therefore, consumers will pay less attention to them and focus on the distinctive first word ‘DELTA’.

Considering the above, and bearing in mind that the only word element of the earlier mark is entirely contained within the beginning of the contested mark, as well as the fact that the element ‘DELTA’ has an independent distinctive role in the contested sign, there is a likelihood of confusion on the part of the public, even when the degree of attention is expected to be higher than average, including the likelihood that consumers might believe that the goods come from the same undertaking or economically-linked undertakings.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Portuguese 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 right invoked by the opponent (judgment of 16/09/2004, T‑342/02, ‘Moser Grupo Media’).

In its observations submitted on 23/02/2015, the applicant argues that there has been no actual confusion on the part of relevant consumers. For the sake of clarity, the Opposition Division would like to stress the fact that, as the similarity and/or identity of the goods/services and the signs are sine qua non for a finding of likelihood of confusion, the arguments or lack of arguments or evidence of the parties do not relieve the Office of its responsibility to analyse and decide on these concepts. Therefore, this argument by the applicant must be rejected as unfounded.

It remains necessary to consider the applicant’s argument that its CTMA has built up a reputation in the specialised field for the goods concerned.

First, the right to a CTMA begins on the date when it is filed and not before, and from that date onwards the sign has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the CTMA falls under any of the relative grounds for refusal, events or facts that occurred before the filing date of the CTMA are irrelevant, because the rights of the opponent, insofar as they predate the CTMA, are earlier than those of the contested sign. Second, although factors such as reputation or enhanced distinctiveness may influence the assessment of likelihood of confusion when they relate to the earlier mark, they do not in any way influence the assessment when they relate to the contested sign. Consequently, the alleged well-known character of the contested sign is not relevant in the present proceedings. Therefore, this argument of the applicant must be rejected as unfounded.

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Karin KUHL

Andrea VALISA

Michele M. BENEDETTI-ALOISI

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.