OPPOSITION No B 2 923 376

Detlev Louis Motorrad-Vertriebsgesellschaft mbH, Rungedamm 35, 21035,; Hamburg, Germany (opponent), represented by RGTH Patentanwälte PartGmbB, Neuer Wall 10, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Shuheng Yuan, RM.208 2F Building A1 West Square, Shenzhen North rail way station

Zhiyuan Middle Road Longhua, 518000 Shenzhen Guangdong, China (applicant), represented by AL & Partners S.R.L.; Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 18/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 923 376 is upheld for all the contested goods.

2. European Union trade mark application No 16 582 421 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 582 421. The opposition is based on inter alia European Union trade mark registration No 10 589 381. The opponent invoked Article 8(1)(b) EUTMR in regard of this mark.

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 10 589 381.

1. The goods

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

Class 9: Aerometers, ammeters, connections for electric lines, indicators (electricity), distance recording apparatus, gasoline gauges, flashing lights (luminous signals), densimeters, theft prevention installations, electric, revolution counters, pressure measuring apparatus, electric sensors, resistances, electric, wires, electric, cables, electric, distance measuring apparatus, radio alarm installations; Speed indicators, speed checking apparatus for vehicles, hydrometers, directional compasses, gasoline gauges, pressure gauges, materials for electricity mains (wires, cables), measuring apparatus, measuring devices (electric), measuring instruments, navigation apparatus for vehicles (on-board computers), navigational instruments, slope indicators, ohmmeters, precision measuring apparatus, relays, electric, acidimeters for batteries, commutators, transmitters of electronic signals, signals, luminous or mechanical, voltmeters, voltage regulators for vehicles, sockets, plugs and other contacts (electric connections), covers for electric outlets, current rectifiers, electric loss indicators, converters, electric, tachometers (mechanical, electric and electronic), temperature indicators, thermometers, not for medical purposes, thermostats for vehicles, personal stereos; Compact disc (CDs); Walkie talkies, Vacuum gauges, Junction sleeves for electric cables, Connectors [electricity], Voltmeters, Counters, Time recording apparatus, Mechanical, Electronic and electric sensors with display instruments; Protective helmets, In particular full-face, flip-up and half-bowl protective helmets for motorcyclists; Crash helmets for motor racing, boating, aviation and mountaineering; Safety helmets for sports; Protective masks; Clothing for protection against accidents; Crash helmets, Visors for crash helmets and Accessories for helmets, Namely visor parts, helmet peaks, Ear pads for crash helmets, Sun visors, Adjustable levers, flip-up visors, helmet straps, respiratory protection devices and air-protection devices for crash helmets, Ear plug?, Fastening straps and chip-strap locks for crash helmets; Spectacles, Helmet intercommunication systems, Straps for spectacles; Protector suits (clothing for protection against accidents), jackets, vests, trousers and overalls (clothing for protection against accidents); Gloves for protection against accidents, Footwear for protection against accident; Protector neck braces (clothing for protection against accidents).

Class 18: Goods of leather and imitations of leather (included in class 18), namely bags and other containers not specifically designed for the objects being carried, small leather goods (included in class 18), namely purses, pocket wallets; Key wallets; Tool bags of leather, empty, leather laces, trunks and travelling bags, umbrellas and walking sticks; Rucksacks and bags (included in class 18) for motorcyclists.

The contested goods are the following:

Class 9: Audio transmitter units; Baby monitors; Bathroom scales; Cell phone cases; Converters for electric plugs; Audio and video receivers; Bicycle speedometers; Computer keyboards; Computer peripheral devices; Bags adapted for laptops; Sleeves for laptops; Cases adapted for notebook computers; Underwater cameras; Speaker enclosures; Bags for cameras; Waterproof camera cases; Antennas; Radio antennas; Television antennas; Headphones; Audio amplifiers; Audio speakers; Audio receivers; Electrical cables for use in connections; Cables (Coaxial -); Connection cables; Audio cable; Cable connectors; Audio cable connectors; Decoders; Signal decoders; Speakers; Converters, electric; Electric power converters; Inverters.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 Electrical cables for use in connections; Cables (Coaxial -); Connection cables; Audio cable are included in the broad category of, the opponent’s cables, electric. Therefore, they are identical.

The contested Cable connectors; Audio cable connectors are included in the broad category of, the opponent’s Connectors [electricity]Connectors [electricity]Connectors [electricity]. Therefore, they are identical

The contested Converters for electric plug; Converters, electric; Electric power converters are included in the broad category of, the opponent’s converters, electric converters, electric converters, electric Therefore, they are identical.

The contested Bicycle speedometers are included in the broad category of, the opponent’s tachometers (mechanical, electric and electronic). Therefore, they are identical.

The contested Inverters are as well (electrical) switches as are the opponent’s relays, electric. These goods overlap and therefore they are identical.

The contested decoders; signal decoders; audio transmitter units; Antennas; Radio antennas; Television antenna; audio receivers; audio amplifiers; Audio and video receivers are electronic circuits and devices that convert different kind of electronic signals from one format to another. The opponent’s transmitters of electronic signals essentially fulfil the same function, namely they convert e.g. sounds into radio waves in order to transmit them over large distances. These goods overlap and therefore they are identical.

The contested bathroom scales are intended to measure the weight of a person. They are thus included in the broad category of the opponent’s measuring apparatus. Therefore, they are identical.

The contested baby monitors are bi-directional devices that transmit audio signals, especially the human voice over short distances. The opponent’s walkie-talkies essentially function the same way and have the same purpose. The goods are therefore considered identical

The personal stereos of the earlier mark are devices that allow to listen to music from different media (originally form cassettes, the first variant was Sony’s Walkman) via headphones or plugged in speakers. They are complementary to the contested headphones; Speakers; audio speakers; speaker enclosures. These goods are moreover usually produced and distributed by the same undertakings and intended for the same public. Therefore they are highly similar.

The contested cell phone cases; bags adapted for laptops; sleeves for laptops; cases adapted for notebook computers; bags for cameras; waterproof camera cases are different variants of bags and containers designed for special transport and protection purpose. These goods are similar to the opponent’s Goods of leather and imitations of leather (included in class 18), namely bags and other containers not specifically designed for the objects being carried, in Class 18. It is common for the consumer to not only use specialised bags and containers for the purpose of the contested goods, but to use interchangeably either specifically adapted or more general variants of such bags. The goods stem from the same producers and are directed at the same consumers. Moreover they will be found in the same stores. They are therefore considered similar.

The contested underwater cameras are devices to take photos in any humid environment. They can be considered, as well as the opponent’s personal stereos, as belonging to the broad category of consumer electronics. The public is used to producers fabricating a wide range of such electronics, including both aforementioned goods. Moreover the goods are sold in the same specialised stores to the same consumers. They are therefore similar.

The contested computer keyboards; computer peripheral devices are devices attached to a host computer, with the purpose of expanding the host’s capabilities. These goods are likely to be produced by undertakings that produce their specialised products in variants which will have full functionality on their own and in variants which will need to work as computer peripheral devices in order to be fully functional. This might be the case for example for the opponent’s navigation apparatus for vehicles (on-board computers); navigational instruments. As the goods have the same manufacturers and end users and are complementary to some degree they are considered similar to a low degree.

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.(for example the baby monitors or bathroom scales) as well as at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high, depending on specialisation of the goods and their price range.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

Louis	LOUISWARE
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 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 part “ware” of the contested sign has a meaning for the English speaking public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘Louis’ present in both signs will be understood as a male first name originating in France by the relevant public. As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, 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).

The element ‘ware’ of the contested sign will be associated with ‘Articles of merchandise or manufacture’ (Oxford English Dictionary at: http://www.oed.com/view/Entry/225693?rskey=wZhFh4&result=3#eid, extracted on 14/06/2018). This element is non-distinctive for any goods.

As both marks are word marks, neither has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter sequence ‘Louis’ which makes up the entire earlier sign and forms the first part of the contested sign However, they differ in the non-distinctive second part of the contested mark ‘’ware’ which has no counterpart in the earlier sign.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘Louis’ present identically in both signs. The pronunciation differs in the sound of the non-distinctive second part of the contested mark ‘’ware’ which has no counterpart in the earlier sign.

Therefore, the signs are aurally highly similar

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, due to the common element, the French first name ‘LOUIS’, the signs are conceptually highly similar.

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’).

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

There is a likelihood of confusion because the differences between the signs are confined to non‑distinctive or secondary elements and aspects.

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).

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Moreover it needs to be taken into account that consumers generally tend to focus on the first part of a sign when being confronted with a trade mark, which is justified by the fact that the public reads from left to right, and thus the part placed at the left of the sign (the initial part) is the one that first catches the attention of the reader.

As the earlier mark is completely integrated in the contested sign, it is indeed, highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public even for goods that are similar only to a low degree.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 589 381. 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 extensive use 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 10 589 381 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 including the trade name in relation to which the opponent invoked Article 8(4) 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

Dorothee SCHLIEPHAKE

Volker Timo MENSING

Jakub MROZOWSKI

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.