OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 515 636
Vivi-Power Gmbh, Industriestr. 2, 68519 Viernheim, Germany (opponent), represented by Reiser & Partner Patentanwälte, Weinheimer Str. 102, 69469 Weinheim, Germany (professional representative)
a g a i n s t
Zhu Xiaoyan, Via Favini 36, 59100 Prato, Italy (applicant).
On 25/02/2016, the Opposition Division takes the following
Class 35: Consumer information services; Business information services.
trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods and services of
Community trade mark application No
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 German trade mark registration No 302 011 030 938.
The goods and services
The goods and services on which the opposition is based are the following:
Class 4: Electrical energy; Fuel gas; Fuel gas mixtures [gaseous].
Class 35: Arranging contracts with electricity, gas and water suppliers; Providing information and consultancy for consumers in trade and business affairs (consumer consultancy).
Class 39: Conducting and transporting of electrical energy, heating, gas or water; Supplying consumers by delivery with electricity, heating, gas or water; Distribution of energy, heating, gas and water; Water supplying (transport); transport by pipeline.
Class 40: Generation of energy, Electricity and heating.
Class 42: Consultancy relating to the conservation of energy.
The contested goods and services are the following:
Class 14: Ornaments, made using or coated in precious or semi-precious metals or stone, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Trinkets of bronze; Key charms coated with precious metals; Trinkets coated with precious metal; Copper tokens; Coins; Commemorative coins; Gold bullion coins; Collectible coins; Non-monetary coins; Objet d'art made of precious stones; Silver objects d'art; Objet d'art of enamelled silver; Works of art of precious metal; Objet d'art of enamelled gold; Key rings [trinkets or fobs] of precious metal; Key rings [trinkets or fobs]; Key fobs of precious metals; Key fobs [rings] coated with precious metal; Fancy keyrings of precious metals; Boxes of precious metal; Commemorative shields; Identity plates of precious metal; Trophies made of precious metal alloys; Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Time instruments; Jewellery boxes and watch boxes.
Class 18: Saddlery, whips and animal apparel; Walking sticks; Sausage skins and imitations thereof; Umbrellas and parasols; Luggage, bags, wallets and other carriers; Studs of leather; Straps for soldiers' equipment; Leatherboard; Straps (Leather -); Straps made of imitation leather; Shoulder straps; Laces (Leather -); Straps for skates; Leather, unworked or semi-worked; Leather thongs; Leather for shoes; Leather thread; Moleskin [imitation of leather]; Sheets of imitation leather for use in manufacture; Sheets of leather for use in manufacture; Trimmings of leather for furniture; Casings, of leather, for springs; Imitation leather; Chin straps, of leather; Worked or semi-worked hides and other leather; Leather and imitation leather; Polyurethane leather; Leather for furniture.
Class 25: Clothing; Headgear; Footwear.
Class 35: Business assistance, management and administrative services; Business analysis, research and information services; Commercial trading and consumer information services; Advertising, marketing and promotional services.
Class 45: Rental of clothing; Astrological and spiritual services; Detective services; Dating services; Religious services; Chaperoning; Adoption placement; Fostering of children; Maintaining lists of wedding presents for selection by others; Colour analysis for personal appearance; Baby sitting; Marriage guidance counselling; Personal letter writing; Rental of jewellery; Planning and arranging of wedding ceremonies; Personal gift selection for others; Dog walking services; Personal shopping for others; Social escort agency services; Cat feeding services [in owners absence].
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 14
The contested goods in this class are mainly semi-precious and precious metals and stones, and goods made of these. The goods also include timepieces and other similar items. The opponent’s goods are electricity, fuel gas and gas mixtures. The opponent’s services are related to generation, distribution, provision and consultancy in the field of electricity, gas and water and general consumer consultancy. The opposed goods have a different nature, purpose and method of use compared to the opponent’s goods and services. They have different origins and manufacturers, distribution channels and consumers. The contested goods are dissimilar to all of the opponent’s goods and services.
Contested goods in Class 18
The contested goods in this class are leather and goods made of leather, walking sticks, luggage. The opponent’s goods are electricity, fuel gas and gas mixtures. The services are related to generation, distribution, provision and consultancy in the field of electricity, gas and water and general consumer consultancy. The opposed goods have a different nature, purpose and method of use compared to the opponent’s goods and services. They have different origins and manufacturers, distribution channels and consumers. The contested goods are dissimilar to all of the opponent’s goods and services.
Contested goods in Class 25
The contested goods in this class are clothing, headgear and footwear items. The opponent’s goods are electricity, fuel gas and gas mixtures. The services are related to generation, distribution, provision and consultancy in the field of electricity, gas and water and general consumer consultancy. The opposed goods have a different nature, purpose and method of use compared to the opponent’ goods and services. They have different origins and manufacturers, distribution channels and consumers. The contested goods are dissimilar to all of the opponent’s goods and services.
Contested services in Class 35
Consumer information services; Business information services are identically contained in both lists of services (including synonyms).
Advertising, marketing and promotional services 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. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.
Business assistance, management and administrative services; Business analysis, research are usually rendered by companies specialised in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to efficiently allocate financial and human resources, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, 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, how to create a corporate identity, etc.
Commercial trading is a business service whereby either goods/ services are sold or commodities are sold.
When comparing these services with the goods of the opponent, apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. With respect to the opponent’s specific services, all of which are related to generation, distribution, provision and consultancy in the fields of electricity, gas and water, or being general information/consultancy services directed to consumers, the contested services are different. They are different in nature and purpose and do not coincide in origin or consumers. The opponent’s services are directed to the needs of consumers, whereas the applicant’s services are directed to the needs of business. The services are not complementary nor in competition. Contrary to the opponent’s arguments, the services are not identical, nor do they even overlap. The services are considered dissimilar.
Contested services in Class 45
The opponent’s goods are electricity, fuel gas and gas mixtures. The services are related to generation, distribution, provision and consultancy of electricity, gas and water and general consumer consultancy.
The contested services are various types of personalised services, including rental of clothing, dating services, provision of wedding lists and dog walking. The contested services are different in nature, purpose and methods of use compared to all the goods and services of the opponent. They have different origins and manufacturers, distribution channels and consumers. Contrary to the opponent’s arguments there is no connection between its information services and the contested wedding list maintenance services for all the reasons detailed above. The contested services are dissimilar to all the opponent’s goods and services.
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 services found to be identical are directed at the public at large. The degree of attention is average.
Earlier trade mark
The relevant territory is Germany.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark.
The contested sign is a figurative mark which contains a stylised image of a person’s head and hair in red, a figurative element consisting of eight joined diamonds in red, word elements VI VI (separated by a tiny asterisk) in green and some characters in a non-Latin script in red.
The word element VIVI, present in both marks, has no meaning in the relevant territory.
The marks have no elements that could be considered clearly more distinctive than other elements.
The earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements. The contested mark has no elements that could be considered more dominant (visually eye-catching) than other elements as all elements have an impact.
Visually, the signs coincide in the words VIVI. However, they differ in that the contested mark contains the colours and device elements which are not present in the earlier mark. It is also noted that as the earlier mark is a word mark, it is the word that is protected and not its written form.
Furthermore, when signs consist of both verbal and figurative components as in the contested mark, in principle, the verbal component of the sign usually 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables VI-VI, present identically in both signs.
Therefore, the signs are aurally identical.
Conceptually, while the public in the relevant territory will perceive the main device element in the contested mark as depicting a woman’s head in the contested mark, with the mark thus conveying this conceptual meaning, the other sign lacks any 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.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The goods and services have been found to be partially identical and partially dissimilar. The similarities and dissimilarities between the signs have been established.
The signs have been found to be similar to the extent that they have in common the letters VIVI that form the entire earlier mark and the only word element of the contested mark.
The additional differentiating elements, namely the device elements and stylisation (in the contested sign), are not sufficient in themselves to counteract the visual and aural similarities. The public will focus on the similar aspects of the marks.
It should be noted that consumers tend to remember the similarities rather than the dissimilarities between signs. In addition, 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 his mind (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’).
Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting identical services come from the same undertaking or economically linked undertakings.
It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.
The opponent has also based its opposition on the earlier Community trade mark No 9 903 436 “vivi-power”.
The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains the additional word ‘POWER’ which is not present in the contested trade mark. Moreover, it covers the same scope of goods and services as the earlier German right. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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 and services both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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.