CANCELLATION No C 37 881 (INVALIDITY)

Apple Inc., One Apple Park Way, 95014 Cupertino, United States of America (applicant), represented by Locke Lord LLP, 201 Bishopsgate, EC2M 3AB London, United Kingdom (professional representative)

a g a i n s t

Mobvoi Information Technology Co., Ltd., Room 1602, 16th floor, No. 3, Suzhou Street, Haidian District, 100080 Beijing, China (EUTM proprietor), represented by TBK, Bavariaring 4-6, 80336 München, Germany (professional representative).

On 11/01/2021, the Cancellation Division takes the following

DECISION

1.	The application for a declaration of invalidity is upheld.

2.	European Union trade mark No 17 186 611 is declared invalid in its entirety.

3.	The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed a request for a declaration of invalidity against European Union trade mark No 17 186 611 ‘Ticpods’ (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM. The application is based on, inter alia, Benelux trade mark registration No 201 748 for the word mark ‘POD’ and EUTM registration No 11 472 008 for the word mark ‘EARPODS’. In relation to these earlier trade marks, the applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion between the contested EUTM and the earlier family of POD marks on the basis of the high degree of similarity of the marks and the high degree of similarity/identity of the contested goods and services. In particular, it argued that the element ‘Tic’ of the contested EUTM had a low degree of distinctiveness, if any, being understood as a reference to the movement of time or the expression of sound and consumers would perceive the contested EUTM ‘Ticpods’ as an extension of the applicant’s family of marks. It also argued that the earlier marks enjoyed enhanced distinctiveness in the European Union in relation to all the goods and services claimed.

As regards the grounds of Article 60(1)(a) EUTMR in connection with Article 8(5) EUTMR, the applicant argued that due to the significant reputation of the earlier marks, the contested EUTM would take unfair advantage of and/or be detrimental to the distinctive character and repute of the earlier marks. The applicant provided detailed information on the company background of Apple Inc., the extensive use of the ‘IPOD’, ‘EARPODS’, ‘HOMEPOD’ and ‘AIRPODS’ marks, the advertising and promotion investments and the requirements to be met in order for Article 8(5) EUTMR to apply. In support of its observations, the applicant submitted a number of annexes whose content will be summarised further down in the decision, only if necessary.

The EUTM proprietor argued that the applicant’s two ‘PODS’ marks, namely ‘AIRPODS’ and ‘EARPODS’ and the applicant’s ‘POD’ marks, namely ‘IPOD’ and ‘HOMEPOD’ were insufficient to form a family of marks and that there existed a large number of other ‘PODS’ and ‘POD’ trade marks registered by third parties. To support its allegations, it submitted a list of these trade marks containing the element ‘POD(S)’. The EUTM proprietor further argued that there was no likelihood of confusion in particular due to the high degree of attention of the public and the distinctive element ‘Tic’ placed at the beginning of the contested sign. Furthermore, it considered that the element ‘pod(s)’ had a low degree of distinctiveness since i) many registered trade marks contained this element and ii) the term ‘pod’ was likely to be perceived as indicating the characteristic of the goods (their compactness/facilities to storage) since it means ‘container or capsule’. In this regard, it submitted the results from a Google search for respectively ‘POD’ and ‘PODS’ and the definition for the term ‘pod’ given by Cambridge online dictionary. The EUTM proprietor also argued that while the ‘AIRPOD’ mark might have acquired reputation for portable music players, this reputation did neither extend to all the claimed earlier marks nor to all the goods and services invoked.

In its final observations, the applicant reiterated its arguments considering in particular that it was the owner of a family of marks comprising the element ‘POD’, being in singular or plural. It also pointed out that there could be any number of factors why marks including the element POD were registered and/used in trade and in any event, the existence of the POD related marks in the EU registers did not alter the enhanced distinctive character of the applicant’s marks. The applicant argued that the degree of attention of the public could be low in relation to some of the goods. It reiterated that the element ‘Tic’ was a reference to the movement of time or the expression of time and that the EUTM proprietor advertised its earphone product as featuring ‘patented “Tickle” touch gestures’ that let users control the audio output, as shown on its website submitted in annex A. It considered that ‘Tic’ was descriptive of the ‘tickle’ features/technology. The applicant submitted further evidence in relation to the alleged reputation/enhanced distinctive character of all earlier marks in the European Union as a result of their widespread use and marketing dating back to 2001 when the applicant released its first POD product, the IPOD.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s Benelux trade mark registration No 201 748 (earlier mark 1) and EUTM registration No 11 472 008 (earlier mark 2).

a) The goods and services

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.

The goods and services on which the application is based are, inter alia, the following:

Earlier mark 1: Benelux trade mark registration No 201 748

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission and/or reproduction of sound or images or other data; apparatus, instruments and materials for transmitting and/or receiving and/ or recording sound and/or images; calculating machines, data processing equipment; computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; computer networks; facsimile machines, answering machines, telephone based information retrieval software and hardware; adapters, adapter cards, connectors and drivers; random access memory, read only memory; solid state memory apparatus; computer gaming machines; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives; central processing units; computer memory devices; solid- state data storage devices; cordless telephones; electronic communication equipment and instruments; telecommunications apparatus and instruments; telecommunications equipment, apparatus and instruments; computer and electronic games; computer software and computer hardware apparatus with multimedia and interactive functions; circuit boards; integrated circuits; magnetic, optical, and electronic data storage devices; apparatus for data storage; hard drives; miniature hard disk drive storage units; headphones; stereo headphones; in-ear headphones; electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, microphones; digital audio and video players with multimedia and interactive functions; accessories, parts, fittings, and testing apparatus for all the aforementioned goods; radio receivers, amplifiers, sound recording and reproducing apparatus; digital audio and video devices; audio cassette recorders and players, video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; audio, video, and digital mixers; radio transmitters; car audio apparatus; global positing systems; navigation apparatus for vehicles (on board computers); cameras; video cameras; telephones; mobile telephones; parts and accessories for mobile telephones; portable digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; handheld digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers and software related thereto; digital music and/or video players; MP3 and other digital format audio players; hand held computers, personal digital assistants, electronic organizers, electronic notepads; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; global positioning system (GPS) devices, telephones; handheld and mobile digital electronic devices for the sending and receiving telephone calls, faxes, electronic mail, and other digital media; computer software; computer programs; pre recorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software; database synchronization software, computer programs for accessing, browsing and searching online databases, computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment- related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; sound effect apparatus and instruments (computer software); electronic tone generators (computer software); computer desktop utility software; screen saver software; software for detecting, eradicating and preventing computer viruses; software for data encryption; software for analysing and recovering data; software for computer system backup, data processing, data storage, file management and database management; software for telecommunication and communication via local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks; software for creating and delivering electronic greeting cards, messages and electronic mail; software for web design, creation, publishing and hosting; software for access to communications networks including the Internet; computer equipment for use with all of the aforesaid goods; magnetic data carriers; blank computer storage media; magnetic, optical, and electronic data storage materials; chips, discs and tapes bearing or for recording computer programs and software; CD-ROMs; batteries; rechargeable batteries; chargers; chargers for electric batteries; none of the above goods being digital signal processing hardware and software used for audio signal manipulation for real or virtual musical instruments; recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers; fire extinguishing apparatus; downloadable audio and video recordings featuring music, comedy, drama, action, adventure and/or animation; downloadable electronic publications in the nature of books, plays, pamphlets, brochures, newsletters, journals, magazines, and periodicals on a wide range of topics of general interest; fonts, typefaces, type designs and symbols in the form of recorded data; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; pre-recorded vinyl records, audio tapes, audio- video tapes, audio video cassettes, audio video discs; audio tapes for sale with booklets; sound, video and data recordings; digital versatile discs; mouse pads; bags and cases adapted or shaped to contain cameras and/or video cameras; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; bags and cases adapted or shaped to contain digital music and/or video players, hand held computers, personal digital assistants, electronic organizers and electronic notepads; holders, straps, armbands, lanyards and clips for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; instructional material relating to the foregoing; computer disk holders; electronic apparatus with multimedia functions for use with all of the aforesaid goods (not being digital signal processing hardware and software used for audio signal manipulation for real or virtual musical instruments); electronic apparatus with interactive functions for use with all of the aforesaid goods (not being digital signal processing hardware and software used for audio signal manipulation for real or virtual musical instruments); accessories, parts, fittings, and testing apparatus for all of the aforesaid goods (not being digital signal processing hardware and software used for audio signal manipulation for real or virtual musical instruments); covers, bags and cases adapted or shaped to contain all of the aforesaid goods, made of leather, imitations of leather, cloth, or textile materials; none of the aforesaid goods being loudspeakers or accessories, parts and fittings for loudspeakers.

Earlier mark 2: EUTM registration No 11 472 008

Class 9: Computers; computer peripheral devices; computer hardware; hand held computers, tablet computers, personal digital assistants, electronic organizers, electronic notepads, electronic book readers; handheld digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; handheld mobile digital electronic devices capable of providing access to the Internet and for the sending, receiving, and storing of telephone calls, faxes, electronic mail, and other digital data; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; sound recording and reproducing apparatus; MP3 and other digital format audio players; digital audio recorders; digital video recorders and players; audio cassette recorders and players; video cassette recorders and players; compact disc recorders and players; digital versatile disc recorders and players; digital audio tape recorders and players; radios, radio transmitters, and receivers; audio, video, and digital mixers; audio amplifiers; audio receivers; audio decoders; car audio apparatus; earphones, headphones; audio speakers; audio components and accessories; electronic communication equipment and instruments; audiovisual teaching apparatus; optical apparatus and instruments; telecommunications apparatus and instruments; global positioning system (GPS) devices; telephones; wireless communication devices for voice, data or image transmission; cables; apparatus for data storage; chips, discs and tapes bearing or for recording computer programs and software; facsimile machines; cameras; batteries; televisions; television receivers; television monitors; computer software; computer games; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; computer software for use in recording, organizing, transmitting, manipulating, and reviewing text, data, audio files, video files and electronic games in connection with computers, televisions, television set-top boxes, audio players, video players, media players, telephones, and handheld digital electronic devices; computer software to enable users to program and distribute text, data, graphics, images, audio, video, and other multimedia content via global communication networks and other computer, electronic and communications networks; computer software for identifying, locating, grouping, distributing, and managing data and links between computer servers and users connected to global communication networks and other computer, electronic and communications networks; computer software for use on handheld mobile digital electronic devices and other consumer electronics; electronic publishing software; electronic publication reader software; computer software for personal information management; downloadable pre-recorded audio and audiovisual content, information, and commentary; downloadable electronic books, magazines, periodicals, newsletters, newspapers, journals, and other publications; database management software; character recognition software; voice recognition software; electronic mail and messaging software; computer software for accessing, browsing and searching online databases; electronic bulletin boards; data synchronization software; application development software; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods.

Class 35: Business management; business administration; business consulting services; providing office functions; advertising agency services; advertising, marketing, and promotion services; advertising and marketing consultation; sales promotion services; promoting the goods and services of others; conducting market research; analysis of advertising response and market research; creation, preparation, production, and dissemination of advertisements and advertising material for others; media planning services; administration of consumer loyalty programs; arranging and conducting incentive rewards programs to promote the sale of goods and services; computerized database and file management; data processing services; creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others; providing, searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others; organizing content of information provided over a global computer network and other electronic and communications networks according to user preferences; providing business, consumer, and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; compilations of directories for publishing on the Internet and other electronic, computer and communications networks; retail store and online retail store services in the fields of computer hardware, computer software, consumer electronics, telecommunications and multimedia goods and accessories, mobile phones, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products; retail store and online store services in the field of entertainment featuring music, video, film, books, periodicals, television programs, games and sporting events; retail store services provided via the Internet and other computer, electronic and communications networks, in the fields of computer hardware, computer software, consumer electronics, telecommunications and multimedia goods and accessories, mobile phones, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products; retail store services provided via the Internet and other computer, electronic and communications networks, in the field of entertainment featuring music, video, film, books, periodicals, television programs, games, and sporting events; retail store services in the field of books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, provided via the Internet and other computer, electronic and communications networks; retail store services in the field of entertainment featuring movies, television programs, sporting events, musical works, and audio and audiovisual works, via the Internet and other computer, electronic and communications networks; retail store services featuring computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, and other consumer electronics, computer software, and accessories, peripherals, and carrying cases for such products, via the Internet and other computer, electronic and communications networks; product demonstrations provided in-store and via global communications networks and other electronic and communications networks; subscription services, namely, providing subscriptions to text, data, image, audio, video, and multimedia content, provided via the Internet and other electronic and communications networks; arranging and conducting of commercial, trade and business conferences, shows, and exhibitions; information, advisory and consultancy services relating to all the aforesaid.

The contested goods and services are the following:

Class 9: Data processing apparatus; Computer peripheral devices; Couplers [data processing equipment]; Pedometers; Time recording apparatus; Flashing lights [luminous signals]; Speaking tubes; Anti-interference devices [electricity]; Telephone receivers; Sonars; Radios; Intercommunication apparatus; Global Positioning System [GPS] apparatus; Telephone transmitters; Hands-free kits for telephones; Smartphones; Wearable activity trackers; Walkie-talkies; Cabinets for loudspeakers; Sound recording carriers; Diaphragms [acoustics]; Audio- and video-receivers; Megaphones; Microphones; Sound transmitting apparatus; Headphones; Portable media players; Equalizers [audio apparatus]; Audio mixers; Materials for electricity mains [wires, cables]; Earphones; Wireless headsets for smartphones.

Class 35: Outdoor advertising; Publication of publicity texts; Advertising; Radio advertising; Television advertising; On-line advertising on a computer network; Layout services for advertising purposes; Production of advertising films; Scriptwriting for advertising purposes; Presentation of goods on communication media, for retail purposes; Rental of billboards [advertising boards]; Business management assistance; Market studies; Business investigations; Organization of exhibitions for commercial or advertising purposes; Business information; Providing business information via a web site; Import-export agency services; Marketing; Sales promotion for others; Personnel recruitment; Relocation services for businesses; Systemization of information into computer databases; Invoicing; Updating and maintenance of data in computer databases; Accounting; Tax filing services; Sponsorship search; Rental of vending machines; Rental of sales stands.

Contested goods in Class 9

Audio mixers; radios; computer peripheral devices; global Positioning System [GPS] apparatus are identically contained in the list of earlier mark 2 and in the list of the contested mark (including synonyms).

The contested sound transmitting apparatus include, as a broader category the applicant’s audio cassette players of earlier mark 2. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested data processing apparatus include, as a broader category the applicant’s computers of earlier mark 2. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested couplers [data processing equipment] are included in, or overlap with, the applicant’s data processing equipment; none of the aforesaid goods being loudspeakers or accessories, parts and fittings for loudspeakers of earlier mark 1. Therefore, they are identical.

The contested pedometers; time recording apparatus; sonars are included in the broad category of, or overlap with, the applicant’s measuring apparatus and instruments; none of the aforesaid goods being loudspeakers or accessories, parts and fittings for loudspeakers of earlier mark 1. Therefore, they are identical.

The contested flashing lights [luminous signals] are included in the broad category of the applicant’s signalling apparatus and instruments; none of the aforesaid goods being loudspeakers or accessories, parts and fittings for loudspeakers of earlier mark 1. Therefore, they are identical.

The contested video-receivers are included in the applicant’s video devices; none of the aforesaid goods being loudspeakers or accessories, parts and fittings for loudspeakers of earlier mark 1. Therefore, they are identical.

The contested speaking tubes; megaphones; audio-receivers; portable media players; earphones; microphones; headphones are included in the broad category of the applicant’s sound recording and reproducing apparatus of earlier mark 2. Therefore, they are identical.

The contested telephone receivers; intercommunication apparatus; telephone transmitters; hands-free kits for telephones; smartphones; walkie-talkies; wireless headsets for smartphones are included in the broad category of the applicant’s telecommunications apparatus and instruments of earlier mark 2. Therefore, they are identical.

The contested wearable activity trackers are included in, or overlap with, the applicant’s global positing system (GPS) devices of earlier mark 2. Therefore, they are identical.

The contested sound recording carriers include, as a broader category the applicant’s audio tapes; none of the aforesaid goods being loudspeakers or accessories, parts and fittings for loudspeakers of earlier mark 1. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested equalizers [audio apparatus] overlap with the applicant’s digital audio devices; none of the aforesaid goods being loudspeakers or accessories, parts and fittings for loudspeakers of earlier mark 1. Therefore, they are identical.

The contested anti-interference devices [electricity]; materials for electricity mains [wires, cables] are included in the broad category of the applicant’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; none of the aforesaid goods being loudspeakers or accessories, parts and fittings for loudspeakers of earlier mark 1. Therefore, they are identical.

The contested cabinets for loudspeakers; diaphragms [acoustics] are included in the applicant’s audio components and accessories covered by earlier mark 2. Therefore, these goods are identical.

Contested services in Class 35

Advertising; marketing are identically contained in the list of earlier mark 2 and the contested mark.

The contested outdoor advertising; publication of publicity texts; radio advertising; television advertising; on-line advertising on a computer network; layout services for advertising purposes; production of advertising films; scriptwriting for advertising purposes; presentation of goods on communication media, for retail purposes; rental of billboards [advertising boards]; sales promotion for others are included in the broad category of advertising of earlier mark 2. Therefore, they are identical.

The contested business management assistance; business investigations; business information; providing business information via a web site are included in the broad category of business management of earlier mark 2. Therefore, they are identical.

The contested market studies are included in the broad category of marketing of earlier mark 2. Therefore, they are identical.

The contested organization of exhibitions for commercial or advertising purposes are included in or overlap with the applicant’s arranging and conducting of commercial, trade and business conferences, shows, and exhibitions of earlier mark 2. Therefore, they are identical.

The contested personnel recruitment; relocation services for businesses are included in the broad category of business administration of earlier mark 2. Therefore, they are identical.

The contested systemization of information into computer databases; invoicing; updating and maintenance of data in computer databases; accounting; tax filing services are included in the broad category providing office functions of the earlier mark 2. Therefore, they are identical.

The contested sponsorship search; rental of sales stands are similar to the applicant’s advertising and promotion services of earlier mark 2. These services have the same providers, distribution channels and they target the same public.

The contested import-export agency services are similar to the applicant’s business administration of earlier mark 2 to the extent that they have the same providers, distribution channels and they target the same public.

The contested rental of vending machines is similar to a low degree to the applicant’s automatic vending machines of earlier mark 1. These goods and services target the same public, they have the same producers/providers and the same distribution channels.

b) 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 and services 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, depending on the specialised nature of the goods and services, the frequency of purchase and their price/the terms and conditions of the goods and services purchased. For instance, the relevant services in Class 35 such as business management services which may be costly and which usually have a direct impact on a company’s strategy will be paid more attention than shorthand services which are usually less expensive and can be qualified as routine tasks that are not decisive to a company’s operation.

c) The signs

1) POD 2) EARPODS	Ticpods
Earlier trade marks	Contested sign

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 relevant territory is the Benelux for earlier mark 1.

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, Zirh, EU:T:2004:62, § 36). For reasons related to the meanings attributed to the signs (as will be detailed below) the Cancellation Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.

Given that the signs are word marks, it is irrelevant whether they are written in lower- or upper-case letters or in a combination thereof.

The earlier mark 1 is composed of the sole word element ‘POD’. Albeit this word exists as such in the English language and has several meanings (in the field of botany, it designates an elongated seed vessel of a leguminous plant such as the pea; it also refers to a detachable or self-contained unit on an aircraft, spacecraft, vehicle, or vessel, having a particular function; information extracted from Lexico online dictionary on 24/11/2020 at https://www.lexico.com/en/definition/pod), such meanings will not be grasped by French-speaking consumers, which will perceive the element ‘POD’ as an arbitrary word. Therefore, it is distinctive to an average degree in relation to the relevant goods.

The contested mark is composed of the word element ‘Ticpods’. This element does not exist as such in the French language and at least for part of the French-speaking public, it will be perceived as an indivisible unit, devoid of any meaning and therefore distinctive to an average degree.

It is however settled case-law that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). It follows from the foregoing that it is reasonable to assume that part of the relevant public will split the contested sign and identify the element ‘Tic’ as referring to a habitual spasmodic contraction of the muscles, most often in the face, an idiosyncratic and habitual feature of a person’s behaviour or to the onomatopoeia designating a regular short, sharp sound, especially that made by a clock or watch (‘tic-tac’ in French). In relation to time recording apparatus in Class 9, the element ‘Tic’ is weak insofar as it may be perceived as referring to a ticking apparatus whereas in relation to the remaining goods and services, it is distinctive to an average degree. As regards the remaining component ‘-pods’, the considerations stated above are equally valid and applicable (meaningless element endowed with an average distinctive character).

The relevant territory is the European Union for earlier mark 2.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any 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 declare the contested trade mark invalid.

In the present case, the English-speaking public will identify in both trade marks the existing English word ‘POD’ used in the plural form. Furthermore, the earlier mark includes the existing English word ‘EAR’. As the marks include English words and, more specifically, as they coincide in an English word which gives rise to relevant similarity between them for the reasons set out below, the Cancellation Division finds it appropriate to focus the assessment on the English-speaking part of the public.

The earlier mark ‘EARPODS’ will be perceived as being formed by the English words ‘EAR’ (the organ of hearing) and ‘POD’, in plural form, which has the meanings indicated above. The term is also used as a suffix (of Greek origin) with the meaning of ‘foot’ (such as in ‘gastropod' or ‘tripod’). The term ‘EAR’ has a somewhat limited distinctiveness in relation to part of the applicant’s goods such as audio components and accessories; sound recording and reproducing apparatus in Class 9 insofar as it gives some indication concerning the purpose of these goods or their methods of use (albeit in an indirect manner). It is nevertheless fully distinctive in relation to part of the goods in Class 9 such as computers and to the services in Class 35. Contrary to the EUTM proprietor’s allegations, the meanings of the term ‘POD(S)’ are not directly related to any of the relevant goods and services at issue which leads to the conclusion that this term is normally distinctive. The EUTM proprietor argued that according to Cambridge online dictionary ‘POD’ is defined as, inter alia, a ‘long, narrow container that is attached to an aircraft for carrying engines, weapons, extra fuel, etc. an escape/storage/fuel pod; a space pod; a small simple building, or a small simple structure in a building, often rounded in shape’. In the present case, these meanings have no clear and direct relation to the goods in Class 9 and even less to the relevant services in Class 35. The term ‘EARPODS’ as a whole does not have a clear meaning and will be perceived as the juxtaposition of both terms which according to English syntax could mean ‘pods for the ears’ or ‘pods of the ears’.

Likewise, as a whole, the term ‘Ticpods’ of the contested sign has no meaning. However, the English-speaking public will also single out the existing word ‘POD’ in plural in the final part of the contested mark. As the meanings of the word are not clearly and directly related to the goods and services at issue, it fulfils a fully distinctive role in the sign. The initial part of the sign ‘Tic’ means ‘a habitual spasmodic contraction of the muscles, most often in the face; an idiosyncratic and habitual feature of a person’s behavior’ (definitions extracted from Lexico online dictionary on 24/11/2020 at https://www.lexico.com/en/definition/tic). It can also be perceived as the regular short, sharp sound, especially that made by a clock or watch or the check mark due to its phonetic identity with the corresponding word ‘tick’. In relation to time recording apparatus in Class 9, the element ‘Tic’ is weak insofar as it may be perceived as referring to a ticking apparatus whereas in relation to the remaining goods and services, it is distinctive to an average degree.

Comparison with earlier mark 1

Visually, the signs coincide in the letters ‘P-O-D’ and differ in the additional letters ‘T-I-C’ of the contested sign and in its final letter ‘S’. The earlier mark is entirely included in the contested sign. Therefore, the signs are visually similar to a below average degree.

Aurally, the signs are pronounced /pod/ and /tik-pod/ given that in French the final letter ‘S’ is silent. The pronunciation of the signs coincides in the sound of the letters ‛P-O-D’, present identically in both signs and differs in the sound of the additional letters ‛T-I-C’ of the contested mark, which have no counterparts in the earlier sign. Although the signs do not have the same number of syllables, given that the sound of the earlier mark ‘POD’ is fully included in the contested sign ‘Ticpods’ and constitutes its second syllable, the signs are aurally similar to an average degree.

Conceptually, for part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. Although another part of the relevant public will perceive the element ‘Tic’ in the contested mark as having the meanings described above, the earlier mark lacks any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Comparison with earlier mark 2

Visually, the signs are identical in length (seven letters) and share a sequence of four letters in the same position namely their last four letters ‘PODS’. They differ in the initial three letters of the signs, namely ‘E-A-R’ versus ‘T-i-c’. The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121). However for the reasons explained above, the public will not perceive the coinciding letters as a mere string of letters but as an independent and distinctive element of the signs, which they will keep in mind notwithstanding the principle that the public tends to attach more importance to the beginning of signs. Therefore, the signs are visually similar to a below average degree.

Aurally, both signs consist of two syllables and fully coincide in the sound of the common sequence ‘PODS’ in the same position namely their second (and last syllables). They differ in the pronunciation of the first syllables /ear/ versus /tic/. Therefore, the signs are aurally similar to an average degree.

Conceptually, the signs coincide in the meaning(s) of the distinctive term ‘PODS’ as indicated above, bearing in mind that the fact that this term is conjoined with the existing word ‘EAR’ in the earlier mark and ‘Tic’ in the contested sign does not alter its meaning (each word keeps its individual meaning). They differ in the concept conveyed by the element ‘ear’ of the earlier mark and by the concepts conveyed by the element ‘Tic’ of the contested mark. The difference is of less weight for the goods in relation to which these terms are weak. Therefore, the signs are conceptually similar to a degree between below average and average depending on the goods and services.

As the two earlier trade marks and the contested sign have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier marks

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 applicant, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the applicant 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 marks will rest on their distinctiveness per se. In this regard, the applicant contends that the marks have no particular meaning in the context of the goods and services for which they are registered and therefore they are highly distinctive.

The Cancellation Division agrees that the earlier marks as a whole have no meaning for any of the relevant goods and services from the perspective of the public in the relevant territory. It must be however recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). When an earlier mark is not descriptive (or is not otherwise non-distinctive) it is Office practice to consider it as having no more than a normal degree of inherent distinctiveness.

Therefore, the distinctiveness per se of the earlier marks must be seen as normal, despite the presence, in earlier mark 2, of an element with a somewhat limited distinctiveness in relation to part of the goods and services as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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).

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.

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).

As far as earlier mark 1 is concerned, the contested goods and services are all identical to the applicant’s goods, except the contested rental of vending machines which is similar to a low degree. The earlier mark is inherently distinctive to an average degree which affords it a normal scope of protection.

The signs are visually similar to a below average degree and aurally similar to an average degree on account of the distinctive element ‘POD’ which constitutes the entirety of the earlier mark and which is fully included in the contested sign. For part of the public, the signs have no meaning that could help to differentiate them. In any case, although, conceptually, for part of the public, the signs are not similar due to the meanings conveyed by the independent element ‘Tic’ of the contested mark, this sole conceptual difference is not sufficient to counterbalance the visual and aural similarities created by the coinciding element ‘POD’, despite its final position in the contested sign.

Therefore, in a global assessment of all the relevant factors and bearing in mind also the principle of interdependence mentioned above, it must be concluded that the differences between the marks cannot outweigh the similarities arising from the common verbal element.

As far as earlier mark 2 is concerned, the contested goods and services are partly identical and partly similar to the applicant’s goods and services.

The earlier mark is distinctive to an average degree which affords it a normal scope of protection. The coinciding term ‘PODS’ will be perceived as the main indicator of origin for some of the goods and services at issue.

The signs are similar from all the perspectives of the comparison. The degree of similarity is below average visually but average aurally and between below average and average conceptually. The coinciding sequence of letters will remain impressed in the public’s mind despite its final position because it will be associated with an existing word whose meaning is not related to the goods and services.

Differences in the beginning of the signs is not sufficient to exclude the risk that the English-speaking public may perceive the goods and services at issue as having the same commercial origin due to the use in both signs, of the meaningful and distinctive word ‘POD’, in plural, in the same position.

In its observations, the EUTM proprietor argues that the earlier trade marks have a weak distinctive character since many trade marks include the element ‘POD(S)’. In support of its argument the EUTM proprietor refers to a Google search and to several trade mark registrations in the European Union.

The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that all such trade marks have been effectively used. Consequently, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks which include the element ‘POD(S)’. Under these circumstances, the EUTM proprietor’s claims must be set aside.

Conclusion

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public (earlier mark 1) and English-speaking part of the public (earlier mark 2) even when they display a high degree of attention. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s Benelux trade mark registration No 201 748 and EUTM registration No 11 472 008. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

Since the cancellation application is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the earlier marks due to their reputation as claimed by the applicant. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Since the application is fully successful on the basis of the trade marks examined on the ground of Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR, there is no need to further examine the application on the grounds of Article 60(1)(a) EUTMR in connection with Article 8(5) EUTMR invoked in relation to the same marks. Likewise, there is no need to examine the other earlier rights (and related grounds) invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

Richard BIANCHI

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 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 1 720 has been paid.