OPPOSITION No B 3 027 557

ista Deutschland GmbH, Luxemburger Straße 1, 45131, Essen, Germany (opponent), represented by Rechtsanwalt Dr. Lindenberg, Garather Schlossallee 19, 40595, Düsseldorf, Germany (professional representative)

a g a i n s t

Shenzhen Bingma Technology Co. Ltd., 17B,17/F, Taibang Technology building, Gaoxin South 6th Ave., Science Park, Yuehai, Nanshan, Shenzhen, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas S.L., C/Proción 7, Edificio América II, Portal 2 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 21/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 027 557 is partially upheld, namely for the following goods and services:

Class 9: Computer software, recorded; Interfaces for computers; Notebook computers; Computer programs [downloadable software]; Computer operating programs, recorded; Computer operating software; Computer software for encryption; Computer software applications, downloadable; Telephone apparatus; Smartphones; Cell phones; Wrist-mounted smartphones; Covers for smartphones; Cases for smartphones; Cell phone cases; Cell phone covers; Protective cases for cell phones; Stands adapted for mobile phones; Earphones.

Class 42: Computer programming; Computer software design; Software (Updating of computer -); Consultancy in the design and development of computer hardware; Rental of computer software; Recovery of computer data; Maintenance of computer software; Computer system design; Duplication of computer programs; Conversion of data or documents from physical to electronic media; Installation of computer software; Data conversion of computer programs and data [not physical conversion]; rental of web servers; Computer virus protection services; Providing search engines for the internet; Monitoring of computer systems by remote access; off-site data backup; electronic data storage; providing information on computer technology and programming via a web site; cloud computing.

2. European Union trade mark application No 17 596 529 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

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 17 253 618 for the figurative mark . The opposition is based on European Union trade mark registrations No 14 798 516 and No 253 450, both, for the word mark ‘memonic’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

The Opposition Division takes note of the fact that the address of the opponent has been changed during the opposition proceedings and that this change has been recorded in the register of the Office. Consequently, the new address of the opponent is the one mentioned in the heading of the present decision.

PROOF OF USE OF THE EARLIER EUTM REGISTRATION No 253 450

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use of one of the trade marks on which the opposition is based, namely of the European Union trade mark registration No 253 450 in relation to all the goods and services covered by this earlier mark.

The request was filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 22/08/2018 the opponent was given two months to file the requested proof of use. This time limit expired on 22/10/2018.

The opponent did not submit any evidence concerning the use of the earlier trade mark on which the opposition is based within the above-mentioned time limit. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected as far as it is based on the earlier EUTM registration No 253 450.

The Opposition Division will now proceed with the analysis of the likelihood of confusion in relation to the earlier EUTM No 14 798 516.

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 on which the opposition is based are the following:

Class 9: Measuring, signalling and radio apparatus, equipment and instruments; Heating cost distributors, calorimeters, heat meters, cold meters, water meters, electricity meters, gas meters, hygrometers and radio modules relating thereto; Apparatus for capturing and transmitting data; Equipment and apparatus for household, sanitary, heating and energy technology, namely equipment and apparatus for the measuring, regulating and checking (supervision) of energy, heat, cold, water, gas, oil, electricity and ancillary costs, and for the recording, display and transmission of data relating thereto; Gas indicators; Smoke alarms and fire alarms; Computer hardware and computer software for the aforesaid goods; Structural and replacement parts for all of the aforesaid goods.

The contested goods and services are the following:

Class 9: Computer software, recorded; Interfaces for computers; Notebook computers; Computer programs [downloadable software]; Computer operating programs, recorded; Computer operating software; Computer software for encryption; Computer software applications, downloadable; Telephone apparatus; Smartphones; Cell phones; Covers for smartphones; Cases for smartphones; Wrist-mounted smartphones; Cell phone cases; Cell phone covers; Protective cases for cell phones; Stands adapted for mobile phones; Ear plugs for divers; Earphones.

Class 35: Ordering services [for others]; Business management consulting; Provision of trade information; Auctioneering; Dissemination of advertising matter; Business assistance; Provision of on-line business and commercial information; Sales management services; On-line advertising on computer networks; Ordering services for third parties; Sales promotion for others; Business consultancy; Advertising and promotion services; Provision of business information; Production of television commercials; Providing an on-line commercial information directory on the internet; Advertising services; Business management consulting services in the field of information technology; Business management consultation; Business acquisitions consultation.

Class 42: Computer programming; Computer software design; Software (Updating of computer -); Consultancy in the design and development of computer hardware; Rental of computer software; Recovery of computer data; Maintenance of computer software; Computer system design; Duplication of computer programs; Conversion of data or documents from physical to electronic media; Installation of computer software; Data conversion of computer programs and data [not physical conversion]; rental of web servers; Computer virus protection services; Providing search engines for the internet; Monitoring of computer systems by remote access; off-site data backup; electronic data storage; providing information on computer technology and programming via a web site; cloud computing.

In this regard and 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.

An interpretation of the wording of the list of goods of the opponent is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 9

The contested Computer software, recorded; Interfaces for computers; Computer programs [downloadable software]; Computer operating programs, recorded; Computer operating software; Computer software for encryption; Computer software applications, downloadable overlap with the opponent’s computer software for the aforesaid goods (Measuring, signalling and radio apparatus, equipment and instruments; Heating cost distributors, calorimeters, heat meters, cold meters, water meters, electricity meters, gas meters, hygrometers and radio modules relating thereto; Apparatus for capturing and transmitting data; Equipment and apparatus for household, sanitary, heating and energy technology, namely equipment and apparatus for the measuring, regulating and checking (supervision) of energy, heat, cold, water, gas, oil, electricity and ancillary costs, and for the recording, display and transmission of data relating thereto; Gas indicators; Smoke alarms and fire alarms). Therefore, they are identical.

The contested Notebook computers; Telephone apparatus; Smartphones; Cell phones; Wrist-mounted smartphones; Earphones are at least similar to a high degree to the opponent’s Apparatus for capturing and transmitting data. These goods can coincide in producer, end user and distribution channels. Furthermore, they can be in competition to each other and have the same nature and purpose.

The contested Stands adapted for mobile phones constitute data communication equipment accessories, which often originate from the same undertaking as the main product. Therefore, they have some relevant points in common with the opponent’s Apparatus for capturing and transmitting data. These goods can also coincide in the relevant public and distribution channels. For all these reasons, they are considered similar.

The contested Covers for smartphones; Cases for smartphones; Cell phone cases; Cell phone covers; Protective cases for cell phones have some relevant points in common with the opponent’s Apparatus for capturing and transmitting data. They usually coincide in producer, relevant public and distribution channels. Consequently, they are similar to a low degree.

The remaining Ear plugs for divers serve to keep water out of your ears. They have a different purpose than the opponent’s goods in Class 9, which refer mostly to various measuring, signalling and radio apparatus/equipment, apparatus for capturing and transmitting data, including computer software/hardware used for these goods in the field of household technology (sanitary, heating and energy). These goods do not coincide in their producers and end user. Furthermore, they are not necessarily complementary. Therefore, they are considered dissimilar.

Contested services in Class 35

All the contested services in this Class refer to services which serve to support other businesses such as advertising services, auctioneering and business related services (business management, business administration and business information/consultation) and are provided by specialist undertakings active in the above-mentioned fields. The opponent’s mark essentially covers various measuring, signalling, data transmission and radio apparatus/equipment, apparatus for capturing and transmitting data, including the computer software/hardware used for these goods in the field of household technology (sanitary, heating and energy). It is clear that manufacturing of these goods requires different expertise than that needed for the contested services in this class. Furthermore, these goods and services in comparison target different customers, they are distributed via different channels and they are neither in competition nor complementary to one another. Therefore, they are dissimilar to all the opponent’s goods.

Contested services in Class 42

All the contested services in this class refer to various IT services, which can be used in a vast variety of technical fields and for this reason they have some relevant points in common with the opponent’s Computer hardware and computer software for the aforesaid goods (apparatus for capturing and transmitting data). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar at least 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 and services found to be identical and similar to various degrees are directed both at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

3. The signs

memonic
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 earlier mark is a word mark consisting of the element ‘memonic’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are depicted in upper or lower case letters, or in a combination thereof; for example, the earlier sign could be depicted in upper case as ‘MEMONIC’. For the same reason the earlier mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark composed of the word ‘MEMO’, depicted in stylised letters in grey.

In this regard it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. In the present case, contrary to the applicant’s allegations, the stylisation of the verbal element ‘MEMO’ in the contested sign is limited to the colouring and font and these figurative aspects will not divert the attention of the relevant part of the public from the verbal element ‘MEMO’, which is clearly perceivable and legible in the contested sign. In the Opposition Division’s view, these figurative aspects serve rather a decorative purpose to embellish the verbal element, which will be perceived by consumers as the main indicator of commercial origin for the relevant goods and services. Therefore, their impact on the assessment of the likelihood of confusion in the present case will be limited.

The applicant argues that the word ‘MEMO’ in both trade marks will be weak in relation to the relevant goods and services for the English-speaking part of the public.

It should be noted that 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 Opposition Division observes that the term ‘MEMO’ may be understood by a part of the relevant public throughout the EU territory active in the business field, for which the English term ‘memo’ refers to a short official note sent by one person to another within the same company or organization (information extracted from Collins English Dictionary online on 12/06/2019 at www.collinsdictionary.com); however, this term and the word mark ‘MEMONIC’ will be considered meaningless for example, for the substantial part of the Polish-, Portuguese- and Bulgarian-speaking public.

Consequently, in view of the considerations in the comparison of signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the substantial part of the Polish, Portuguese and Bulgarian-speaking public and the applicant’s claim in this regard must be put aside.

As a result, the elements ‘MEMO’ and ‘MEMONIC’ are meaningless and, therefore, normally distinctive in relation to the goods and services in question.

The contested sign has no elements which could be considered more dominant (visually eye‑catching) than other elements.

Both, visually and aurally, the signs coincide in the letters ‘M-E-M-O’ constituting the only verbal element of the contested sign and which are fully reproduced in the beginning of the earlier mark. In this regard, it should be mentioned that consumers generally tend to focus on the initial element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the coincidence found in the initial element of the signs will be of a strong importance for the relevant part of the public. The signs differ in the final letters ‘N-I-C’ of the earlier mark, where the attention of the public is not normally focused and the figurative components of the contested sign, which will have a limited impact on the relevant part of the public, as explained above. Furthermore, the figurative elements are not subject of an aural comparison.

Bearing in mind the above-mentioned and, in particular, the coincidence placed in the verbal element of the contested sign ‘MEMO’, reproduced fully in the beginning of the earlier mark, the signs are considered visually and aurally similar at least to an average degree.

Conceptually, as mentioned above, the elements ‘MEMO’ and ‘MEMONIC’ are meaningless for the substantial part of the Polish-, Portuguese- and Bulgarian-speaking public. Consequently, the conceptual comparison is not possible.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabel, EU:C:1997:528, § 22).

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

In the present case, the conflicting goods and services are partly identical, partly similar to various degrees and partly dissimilar.

The earlier mark as a whole has a normal degree of distinctiveness.

The conflicting signs are visually and aurally similar at least to an average degree and from the conceptual perspective they are neutral.

The verbal element ‘MEMO’, which represents the sole verbal element of the contested sign and is identically reproduced in the beginning of the earlier mark, represents the majority of letters displayed therein. The differences between the signs are limited to the letters ‘N-I-C’ of the earlier mark, which will have less impact on the relevant consumer due to their final position within the sign. As analysed above, the figurative aspects of the contested sign serve rather a decorative purpose to embellish the verbal element ‘MEMO’, which will be perceived by consumers as the main indicator of commercial origin for the relevant goods and services.

Additionally, 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).

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, the Opposition Division concludes that the signs are sufficiently similar to induce a likelihood of confusion on the substantial part of the Polish-, Portuguese- and Bulgarian-speaking part of the public in relation to identical and similar to various degrees goods and services, including the goods and services which are similar to a low degree to the opponent’s goods. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 798 516. 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 reject the contested application.

The applicant refers to a previous decision of the Office to support its arguments, in particular to the opposition decision of 22/03/2005 B 490 229 ‘VITAL’ vs ‘VITAL MIND’, in which the Opposition Division rejected the opposition in its entirety. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

However, the conclusions drawn in the previous decision referred to by the applicant are not relevant to the present opposition proceedings since the circumstances of the case are totally different. The Opposition Division notes that the decision mentioned by the applicant is relatively old and that it does not take into account the recent changes of the Office practice regarding the methodology used, when comparing the signs. The relevant territories in which the assessment of the likelihood of confusion has been examined were different and covered Spain, France and Italy and the goods have not been compared since the signs have been assessed as different overall. Consequently, the outcome of the decision mentioned by the applicant cannot be valid in the present case. Therefore, the applicant’s arguments must be put aside as unfounded.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to various degrees to the opponent’s goods, including the goods and services which are similar to a low degree to the opponent’s goods.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services 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

Gueorgui IVANOV

Monika CISZEWSKA

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.