OPPOSITION No B 2 992 660

Candid Group B.V., Asterweg 75, 1031 HM, Amsterdam, Netherlands (opponent), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX, Weesp, Netherlands (professional representative)

a g a i n s t

Beijing Jin Rui De Lu Technology Co. Ltd., No. 31 Yanqi Street, Yanqi Econonomic Development Zone, Huairou District, 101407, Beijing, China (applicant), represented by Hoffmann · Eitle Patent- Und Rechtsanwälte PartmbB, Arabellastr. 30, 81925, München, Germany (professional representative).

On 31/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 992 660 is partially upheld, namely for the following contested goods and services:

Class 9 Calculating machines; data processing apparatus; computers; computer programmes [programs], recorded; computer peripheral devices; electronic publications, downloadable; computer game software; downloadable music files; downloadable image files; laptop computers; interactive touch screen terminals; electronic sheet music, downloadable; radios; intercommunication apparatus; video telephones; Global Positioning System [GPS] apparatus; smartphones; sound recording carriers; loudspeakers; microphones; sound transmitting apparatus; sound recording apparatus; headphones; portable media players; electronic book readers.

Class 38: Message sending; communications by telephone; communications by cellular phones; transmission of electronic mail; providing internet chatrooms; voice mail services; transmission of digital files; providing online forums.

Class 42: Technical research; research and development of new products for others; scientific research; industrial design; packaging design; styling [industrial design]; computer programming; computer software design; updating of computer software; computer system design.

2. European Union trade mark application No 17 091 307 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 091 307 for the figurative mark . The opposition is based on Benelux trade mark registration No 982 759 of the word mark ‘LAVINCI’. 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 and services

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

Class 9: Computer software; Software; Computer software for application and database integration; Computer software for controlling and managing access server applications; Computer software to enhance the audio-visual capabilities of multimedia applications; Computer software downloadable from global computer information networks; Video and audio content downloadable from the Internet; Downloadable video games; Application software; computer browsing software, Software for providing Internet access; Peripherals adapted for use with computers.

Class 35: Advertising, business management, business administration, office functions; Market analysis; Marketing studies; Marketing and services in the field of market canvassing, research and analysis; Services provided by a communications agency; Development and design of publicity campaigns; Consultancy and assistance for businesses in the field of business strategy; Advertising and advertising agency services; Mediation concerning the placing of advertisements on the Internet; Databases containing information on business management in relation to businesses; Consultancy and research agencies for drawing up marketing and business plans; Devising and organising advertising campaigns; Consultancy relating to marketing, and in the field of external business communication, including via the internet; Development of marketing strategies and concepts; Word processing and Computerised file management; Consultancy in the field of the aforesaid services; The aforesaid services, whether or not provided via the Internet.

Class 38: Telecommunication and communication services; Providing access to electronic communications networks, to the Internet and to extranets; Electronic mail and messaging transmission; Internet services provider services; Information relating to the aforesaid, including services provided online from computer networks or via the internet or extranets, telecommunication, namely transmission and dissemination of information and data via computer networks and the internet, electronic sending of messages and communication for groups; Providing of access to a website containing information relating to software; Providing of access to, and rental of access time to, electronic communications networks and electronic databases; Internet services provider services; Consultancy regarding the aforesaid services.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Provision of scientific information; Preparation of project analysis studies; Preparation of reports relating to scientific research; Scientific reports; Compilation of scientific information; Research services; Research and development services; Services for the development of methods of testing; Measurement evaluation services; IT services; Consultancy in all the aforesaid services; The aforesaid services, whether or not provided via the internet.

The contested goods and services are the following:

Class 9 Calculating machines; data processing apparatus; computers; computer programmes [programs], recorded; identity cards, magnetic; computer peripheral devices; electronic publications, downloadable; computer game software; downloadable music files; downloadable image files; laptop computers; interactive touch screen terminals; electronic sheet music, downloadable; chronographs [time recording apparatus]; telephone receivers; radios; intercommunication apparatus; telephone transmitters; video telephones; Global Positioning System [GPS] apparatus; smartphones; tape recorders; cabinets for loudspeakers; sound recording carriers; diaphragms [acoustics]; loudspeakers; audio- and video-receivers; microphones; sound transmitting apparatus; sound recording apparatus; headphones; portable media players; electronic book readers.

Class 38: Message sending; communications by telephone; communications by cellular phones; transmission of electronic mail; providing internet chatrooms; voice mail services; transmission of digital files; providing online forums.

Class 42: Technical research; research and development of new products for others; scientific research; industrial design; packaging design; styling [industrial design]; computer programming; computer software design; updating of computer software; computer system design.

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

Computer programmes [programs], recorded; computer peripheral devices are identically contained in both lists of goods (including synonyms).

The contested computer game software is included in the broad category of the opponent’s software. Therefore, they are identical.

The contested downloadable music files; downloadable image files are included in the broad category of the opponent’s video and audio content downloadable from the Internet. Therefore, they are identical.

The contested loudspeakers; microphones; headphones can be used as ancillary devices used to put information into and get information out of a computer and are, therefore, identical to the opponent’s peripherals adapted for use with computers.

The contested sound transmitting apparatus; sound recording apparatus include as broader categories different types of computer peripherals such as loudspeakers, headphones, webcams and microphones. Since the Opposition Division cannot dissect ex office the broad categories of the applicant’s goods, they must be considered identical to the opponent’s peripherals adapted for use with computers.

The contested electronic publications, downloadable; electronic sheet music, downloadable are electronic versions of traditional media, like e-books, sheet music, electronic journals, online magazines, online newspapers etc. It is becoming common to distribute books, magazines and newspapers to consumers through tablet reading devices by means of so-called apps in the form of electronic publications. Consequently, there exists a complementary relation between the opponent’s software / apps and downloadable electronic publications and sheet music. Their producers can be the same; they follow the same distribution channels and the public is generally also the same. These goods are considered to be similar.

The contested sound recording carriers are similar to the opponent’s video and audio content downloadable from the Internet, since both goods contain sound recordings and, therefore, serve the same purpose. As a consequence, they can be in competition and target the same consumers. Moreover, they can be sold through the same distribution channels and may originate from the same kind of undertakings.

The contested data processing apparatus; computers; calculating machines; laptop computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. They need software to operate.

The contested smartphones are handheld devices with a mobile operating system that combines computing, telephone/fax, Internet and networking features. They use software in order to operate, but more importantly, they also allow users to download, install and utilise other software (application software also known as ‘an app’).

The contested Global Positioning System [GPS] apparatus are instruments whose purpose of navigation is to ascertain position and to determine the speed, and/or direction to arrive at the port or point of destination. They function in a manner similar to computers or tablet computers and allow its users to install software of navigational or supplementary purpose.

The contested interactive touch screen terminals are computer terminals featuring specialized hardware and software that provide access to information and applications for communication, commerce, entertainment, or education.

The contested portable media players come in various types, analogous and digital, and can include networked audio players which are players that connect via (WiFi) network to receive and play audio. These types of units typically do not have any local storage of their own and must rely on a server, typically a personal computer also on the same network, to provide the audio files for playback.

Likewise the contested electronic book readers come in various forms. Some use the internet through Wi-Fi and the built-in software can provide a link to a digital Open Publication Distribution System (OPDS) library or an e-book retailer, allowing the user to buy, borrow, and receive digital e-books. An e-reader may also download e-books from a computer or read them from a memory card.

It follows from this that the above contested goods need the opponent’s software to operate. The latter is important for use of the former, as use of application software increases the functionality of these products. In other words, these goods are complementary to each other. Therefore, they target the same public and may be found in the same shops. They can also be produced by the same undertakings because the manufacturers of the contested goods often design and offer their own product software. Therefore, these goods are similar.

The contested radios; intercommunication apparatus; video telephones are used to allow people to communicate with one another by remote means (e.g. via radio waves, optical signals, etc., or along a transmission line). The opponent’s telecommunication services allow people to communicate with one another by remote means. There is a clear link between these goods in Class 9 and the services in Class 38, since consumers use the applicant’s goods when they want to communicate with someone. Therefore, these goods and services are complementary and often provided by the same undertakings. Furthermore, these goods and services can be purchased through the same distribution channels, for instance in IT or telecom shops where also certain telecommunication services can be contracted (12/11/2008, T‑242/07, ‘Q2web’, EU:T:2008:488, § 25-27). Therefore, they are similar.

However, there is no such link with the contested telephone receivers; telephone transmitters. As an integrated part of telephones they are not for sale in the same shops and are not commonly produced by the same undertakings that offer telecommunication services. Just like the remaining contested identity cards, magnetic; chronographs [time recording apparatus]; tape recorders; cabinets for loudspeakers; diaphragms [acoustics]; audio- and video-receivers, they have nothing in common with the opponent’s software, computer peripherals or audio and video content in Class 9, nor with any of the professional support services of Class 35, the telecommunication services of Class 38 or the scientific and technological services of Class 42. The expertise needed to manufacture the applicant’s goods is entirely different from the expertise required to produce the opponent’s goods or render its services. The goods and services in question satisfy very different needs, are offered by specialised companies in their corresponding fields, are not interchangeable and therefore not in competition. Even if the contested telephone receivers; telephone transmitters; cabinets for loudspeakers; diaphragms [acoustics] are components of the opponent’s computer peripherals, this does not automatically render them similar. The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, §61). Moreover, as parts of these end products, they can neither be used as such to render the opponent’s services in Class 38. Therefore, these goods are dissimilar to the goods and services covered by the earlier mark.

Contested services in Class 38

The contested message sending; communications by telephone; communications by cellular phones; transmission of electronic mail; providing internet chatrooms; voice mail services; transmission of digital files; providing online forums are included in the broad category of the opponent’s telecommunication and communication services. Therefore, they are identical.

Contested services in Class 42

The contested technical research; research and development of new products for others; scientific research; industrial design; packaging design; styling [industrial design]; are included in the broad category of the opponent’s scientific and technological services and research and design relating thereto. Therefore, they are identical.

The contested computer programming; computer software design; updating of computer software; computer system design are included in the broad categories of the opponent’s design and development of computer hardware and software; IT services. Therefore, they are identical.

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 technical services in Class 42 mainly target business consumers, while the goods and services of Classes 9 and 38 target both the general public and specialists.

The public’s degree of attentiveness will be above average in relation to the services in Class 42 and may vary from average to above average in relation to the goods and services of Classes 9 and 38, depending on the price, specialised nature, or terms and conditions of the goods or services purchased. For example, in relation to a very basic calculating machine of Class 9 the level of attention may be average, whereas the consumers are likely to be more attentive when buying a computer, a product that is not cheap nor bought on a frequent basis.

3. The signs

LAVINCI
Earlier trade mark	Contested sign

The relevant territory is the Benelux.

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).

Visually, the verbal element ‘VINCI’ of the contested mark is entirely reproduced in the earlier mark ‘LAVINCI’ albeit not as an independent element but as part of a new word. Nevertheless, this means that four out of six letters in total are the same and appear in the same order as those of the earlier mark. The only differences lie in the presence of the letter combination ‘LA-’ which occupies the first part of the earlier mark and the typeface of the contested mark. However, this typeface hardly makes a difference being a standard bold one. Moreover, in the present case, where more than two thirds of the earlier mark is identical to the contested mark the small difference at the beginning of the earlier mark cannot counterbalance the similarity in the lengthier rest of the sign. Hence, overall the marks are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced in three syllables as ‘LA-VIN-CI’ and the contested sign in two as ‘VIN-CI’. This means that the last two syllables of the earlier mark coincide with the whole of the contested mark. Moreover, in both marks the stress falls on either the syllable ‘VIN’ (in Dutch and German) or the last syllable ‘CI’ (in French). Therefore, the additional syllable ‘LA’ at the beginning of the earlier mark cannot prevent the finding of an average degree of phonetic similarity given that the identity of the rest of the two syllables, VIN-CI, amounts to a substantial phonetic entity.

Conceptually, although it cannot be excluded that some consumers may associate either mark with the famous ‘Leonardo da Vinci’, an Italian polymath of the Renaissance, for the majority of the relevant consumers in the Benelux both signs will be perceived as fanciful meaningless terms. 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 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.

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 (eleventh recital 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods and services were found partly identical, partly similar and partly dissimilar. The public’s degree of attentiveness may vary from average to above average. The marks in dispute have been found to be visually and aurally similar to an average degree while the conceptual aspect does not influence the assessment of the similarity of the signs.

Considering all the above, also taking into account that consumers only rarely have the chance to make a direct comparison between the different marks and must rely on imperfect recollection 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 Benelux trade mark registration.

Although it is true that some of the goods and services are aimed at a public displaying a more elevated level of attention, e.g. the contested technical research, that does not mean that confusion is less likely. The fact that the public concerned is more careful about the identity of the producer or supplier of the product or service that it wishes to obtain does not mean that it will examine in detail the mark to which it will be confronted, or that it will compare it thoroughly with another brand. Indeed, even for an audience with a higher level of attention, the fact remains that the average consumer is rarely able to make a direct comparison of the different brands but must rely on the imperfect image that he has kept in memory (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

It follows from the above that the contested trade mark must be rejected for the goods and services 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 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Pedro JURADO MONTEJANO

Adriana VAN ROODEN

Katarzyna ZANIECKA

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.