OPPOSITION No B 2 286 816

NXP B.V., High Tech Campus 60, 5656 AG Eindhoven, The Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage Anna van Buerenplein 21A, 2595DA Den Haag, the Netherlands (professional representative)

a g a i n s t

Shenzhen See Me Here Electronics Co. Ltd., 3~4F, D Block, TongFuYu Industrial Park, Xi’Xiang Town, Bao’an District, Shenzhen, Guangdong Province, People’s Republic of China (applicant), represented by Würth & Kollegen, Sögestr. 48, 28195 Bremen, Germany (professional representative).

On 24/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 286 816 is partially upheld, namely for the following contested goods:

Class 9: Headphones;  Portable media players; Computer peripheral devices; Cameras [photography]; Laptop computers; Eyeglasses; portable telephones; Computers; Projection apparatus; Television apparatus.

2. European Union trade mark application No 12 126 306 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 126 306, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 10 920 007. 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.

1. The goods

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

Class 9: Electronic, electrotechnical and electromagnetic modules; data processing equipment, data storage apparatus; microprocessors; interfaces for computers; integrated circuits (ICs), chips (integrated circuits); semiconductors; smart cards; smart card integrated circuits; RFID chips and tags; computer hardware and software for creating, programming, controlling, encoding, scanning, reading and interpreting RFID chips and tags; smart card integrated circuits; contactless smart cards; dual interface smart cards; dual interface integrated circuits (‘ICs’) that provide a link between contactless cards and contact cards; writers and readers for wireless transmission to and from transponder chips; computer programs for controlling transmission of data to and reading of data from transponder chips; data processing machines for fare determination using transponder chips; all of the aforementioned products to be used for electronic ticketing in public transport, road tolling, electronic airline ticketing and access control to buildings.

Following a limitation made on 26/12/2014, the contested goods are the following:

Class 9: Cabinets for loudspeakers; animated cartoons; headphones;  portable media players; computer peripheral devices; cameras [photography]; laptop computers; eyeglasses; chargers for electric batteries; portable telephones; batteries, electric;  computers; projection apparatus; television apparatus.

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 portable media players; cameras [photography]; laptop computers; portable telephones; computers; projection apparatus; television apparatus are included in the broad category of, or overlap with, the opponent’s data processing equipment [all of the aforementioned products to be used for electronic ticketing in public transport, road tolling, electronic airline ticketing and access control to buildings]. Therefore, they are identical.

The contested headphones and computer peripheral devices are similar to the opponent’s data processing equipment; all of the aforementioned products to be used for electronic ticketing in public transport, road tolling, electronic airline ticketing and access control to buildings because they may have the same producers, end users and distribution channels. Furthermore, they are complementary.

The contested cabinets for loudspeakers are parts of and accessories for apparatus for reproduction of sound or images; animated cartoons are motion pictures made from a series of drawings, computer graphics or photographs of inanimate objects (e.g. puppets) and that simulate movement through slight progressive changes in each frame; and eyeglasses are lenses for correcting or improving defective eyesight. The opponent’s goods, however, have a different nature, purpose and method of use, different usual origins and different distribution channels. Furthermore, the goods are not in competition and also differ in their end users. Therefore, they are dissimilar.

The contested batteries, electric are containers of two or more primary cells connected together, usually in series, to provide a source of electric current, and chargers for electric batteries are devices for charging or recharging batteries. Although some of these goods may be used in connection with the opponent’s goods in Class 9, such as data processing equipment and writers and readers for wireless transmission to and from transponder chips, this is not a strong enough argument in favour of similarity due to complementarity, since batteries are not essential for the functioning of those devices. They can (and indeed in most cases do) also use power from the electricity network. Moreover, various types of batteries can be used in almost any device powered by electricity, and considering batteries similar to all of these devices is not justified by the argument of complementarity. Therefore, these goods are dissimilar.

2. 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 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 due to the possible high price of some of the goods at issue.

3. The signs

MIFARE
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 earlier mark is a word mark, ‘MIFARE’.

The contested sign is a figurative mark featuring the word ‘MIFA’ in fairly standard black characters.

Neither of the marks has any element that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in ‘MIFA’, which forms the entire contested sign and is entirely included in the beginning of the earlier mark. However, they differ in the last letters of the earlier sign, namely ‘RE’, and in the slight stylisation of the contested sign.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an 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 ‘MIFA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛RE’ of the earlier mark, which have no counterparts in the contested sign.

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

Conceptually, neither of the signs has a meaning for the public 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.

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 claims that its mark is particularly distinctive by virtue of intensive use. However, it did not make this claim within the relevant deadline; therefore, 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. Global assessment, other arguments and conclusion

The Court has stated that the 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 and services (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical, partly similar and partly dissimilar, and the degree of attention may vary from average to high. The marks are visually and aurally similar to an average degree because they differ in the last two letters of the earlier sign, namely ‘RE’. However, the facts that the marks coincide in their beginnings, namely in the letters ‘MIFA*’, and that these letters form the entire contested mark outweigh the differences between them.

Therefore, considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 920 007.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Ana MUÑIZ RODRÍGUEZ

Eamonn KELLY

Janja FELC

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.