OPPOSITION No B 2 893 900

Nokia Corporation, Karaportti 3, 02610 Espoo, Finland (opponent), represented by Stéphane Thierry, Alcatel-Lucent International Trademark Department, Site de Nokia Paris-Saclay, Route de Villejust, 91620 Nozay, France (professional representative)

a g a i n s t

Berner Oy, Hitsaajankatu 20-24, 00810 Helsinki, Finland (applicant), represented by Ruth Almaraz Palmero, Avenida de Aguilera 19-1ºB, 03007 Alicante, Spain (professional representative).

On 31/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 893 900 is upheld for all the contested goods.

2. European Union trade mark application No 16 221 211 is rejected in its entirety.

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

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 221 211, for the word mark ‘NOKIAN’. The opposition is based on, inter alia, European Union trade mark registration No 10 608 743, for the word mark ‘NOKIA’. The opponent invoked Article 8(1)(a) and (b) and Article 8(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 opponent’s European Union trade mark registration No 10 608 743.

1. The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Footwear.

Footwear is identically protected by both marks.

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 are directed at the public at large. The degree of attention will be average.

3. The signs

NOKIA	NOKIAN
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).

Both signs are word marks. Contrary to the applicant’s opinion, the Opposition Division considers that a substantial part of the relevant public will not associate the element ‘NOKIA’ of the earlier mark with a town in Finland, but will perceive it a meaningless term. Therefore, for this part of the public, this element is normally distinctive. The element ‘NOKIAN’ of the contested mark is also meaningless for the majority of the public, and therefore, distinctive.

Since a non-negligible part of consumers in the EU will not associate the verbal elements of the signs with any meaning but will rather perceive them as consisting of fanciful words, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will perceive the elements ‘NOKIA’ and ‘NOKIAN’ as meaningless.

Visually and aurally, and irrespective of the different pronunciation rules in the different parts of the relevant territory, the signs coincide in the letters/sounds ‘NOKIA’ which form the entire earlier mark and are placed at the beginning of the contested sign. Contrary to the applicant’s argument, the signs cannot be considered to be short, since they are composed of 5 and 6 letters. The only difference between the marks lies in the last letter of the contested mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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 difference in the last letter is not particularly striking, as suggested by the applicant.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for a substantial part of 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.

According to the opponent, the earlier mark has been extensively used and enjoys 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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods under comparison are identical and target the general public with an average degree of attention. The marks are visually and aurally similar to a high degree and there is no concept that might help to differentiate them. The difference in the additional letter ‘N’ of the contested sign, placed at the end where it is more likely to be overlooked by consumers, is not sufficient to compensate the similarities between the signs and to exclude likelihood of confusion.

Account is 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).

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

In its observations, the applicant argues that there are several registrations with the word ‘NOKIA*’ at European level which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (judgment of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 608 743. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 10 608 743 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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)(a) and Article 8(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

Pedro JURADO MONTEJANO

Begoña URIARTE VALIENTE

Benoit VLEMINCQ

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.