OPPOSITION No B 3 031 849

Rocks Off Limited, Satisfaction House, Unit C, Northfield Point, Cunliffe Drive, NN16 9QJ Kettering, United Kingdom (opponent), represented by Surjit Okram, Satisfaction House, Unit C, Northfield Point, Cunliffe Drive, NN16 9QJ Kettering, United Kingdom (employee representative)

a g a i n s t

Chenming Song, Rm301, Unit 1, Bldg 34, Fengheyuan, Anyang Str, Rui'an City, Zhejiang, People’s Republic of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 30/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 031 849 is upheld for all the contested goods, namely:

Class 10: Massage appliances; Massage apparatus; Vibration generating apparatus for massage.

2. European Union trade mark application No 17 335 621 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 335 621 for the figurative mark , namely against some of the goods in Class 10. The opposition is based on European Union trade mark registration No 13 771 407 for the word mark ‘RISE’. 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.

a) The goods

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

Class 10: Massage appliances; Manual massage instruments; Esthetic massage apparatus; Electrically operated massagers; Massage apparatus, electric or non-electric; Marital aids; Vibrators, being adult sexual aids; Vibromassage devices; Vibromassage apparatus; Body massagers.

The contested goods are the following:

Class 10: Massage appliances; Massage apparatus; Vibration generating apparatus for massage.

Massage appliances; Massage apparatus; Vibration generating apparatus for massage are identically contained in both lists of goods (including synonyms).

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 found to be identical 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, the frequency of purchase and their price.

c) The signs

RISE
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 ‘RISE’. In case of word marks, the words as such are protected or seek protection; therefore, it is immaterial for the visual comparison whether the earlier mark is depicted in upper- or lower-class letters, or in which particular typeface it is presented.

The contested sign is figurative and it is composed of the word ‘RISE’ presented in bold, title case black fairly standard characters. This element is followed by two Chinese characters.

The English word ‘RISE’ present in both signs will be understood as, inter alia, moving upward or from a lower position to a higher one by the English-speaking public. As it doesn’t describe the characteristics of the goods in question, it is considered distinctive. For the remaining part of the public, it is meaningless and as such also distinctive.

The figurative element of the contested sign consists of two logograms that may be perceived by the public as characters belonging to Asian writing systems, for instance Chinese. The relevant public will not attribute any specific meaning to these figurative elements, and as such they are distinctive.

Visually, the signs coincide in the verbal element ‘RISE’ which constitutes the whole earlier sign and is placed at the beginning of the contested mark. However, they differ in the figurative element of the contested sign. 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. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are highly similar.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that understands the meaning of ‘RISE’, the signs will be associated with the same meaning, and therefore the signs are conceptually identical. For the remaining 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 for this part of the public.

As the signs 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 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.

e) Global assessment, other arguments and conclusion

In the present case the goods are identical and they target both the general public and also professionals. The degree of attention may vary from average to higher than average.

The signs are visually highly similar and aurally identical. For part of the public they are conceptually identical and for the remaining part the conceptual comparison is not possible. Moreover, the common element, ‘RISE’, is the only element in the earlier sign and the only verbal element in the contested sign. For this reason, both signs will be referred to simply as ‘RISE’. Consequently, the public is likely to remember the verbal element of the contested sign without the figurative elements; therefore, when confronted with the signs, a likelihood of confusion cannot be denied, particularly considering that the goods are identical.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 771 407. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Helen Louise MOSBACK

Katarzyna ZANIECKA

Justyna GBYL

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.