OPPOSITION No B 3 044 750

ITM Entreprises, 24, rue Auguste Chabrières, 75015 Paris, France (opponent), represented by Cabinet Netter, 36, avenue Hoche, 75008 Paris, France (professional representative)

a g a i n s t

Xiaolei Zhang, Rm.1403, Mianshui Business Bldg., No. 6, Fuhua 1st Rd., Futian Dist., Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Sławomir Krzysztof Nowicki, Podczachy 27, 99-300 Kutno, Poland (professional representative).

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

DECISION:

1. Opposition No B 3 044 750 is upheld for all the contested goods, namely:

Class 9: Projection apparatus; earphones; smartphones; mobile telephones; cell phones; cellular phones; covers for smartphones; cases for smartphones; protective films adapted for smartphones; batteries, electric; computer peripheral devices; couplers [data processing equipment]; chargers for electric batteries; batteries, electric, for vehicles; accumulators, electric, for vehicles; alarms; spectacles; eyeglasses; theft prevention installations, electric.

2. European Union trade mark application No 17 481 615 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 481 615 , namely against some of the goods in Class 9. The opposition is based on international trade mark registration No 1 139 873 designating the European Union. 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, inter alia, the following:

Class 9: Scientific (other than medical), optical, measuring, signaling, checking (supervision), life-saving apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images, car radios, loudspeakers, antennas, car telephones and hands-free kits for telephones, compact disk players; Navigation apparatus for vehicles (on-board computers), speed indicator and checking apparatus for vehicles, automatic pressure loss indicators for vehicle tires, odometers for vehicles, petrol gauges, revolution counters; anti-theft warning apparatus; alarms for vehicles; electric door openers; voltage regulators for vehicles; batteries for vehicles, electric accumulators for vehicles, fuses; electric cables and wires, starter cables for motors; flashing lights (luminous signals); personal reflective disks for the prevention of traffic accidents, vehicle breakdown warning triangles; fuel and petrol pumps for gas stations; downloadable electronic publications.

The contested goods are the following:

Class 9: Projection apparatus; earphones; smartphones; mobile telephones; cell phones; cellular phones; covers for smartphones; cases for smartphones; protective films adapted for smartphones; batteries, electric; computer peripheral devices; couplers [data processing equipment]; chargers for electric batteries; batteries, electric, for vehicles; accumulators, electric, for vehicles; alarms; spectacles; eyeglasses; theft prevention installations, electric.

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 contested batteries, electric; accumulators, electric, for vehicles; batteries, electric, for vehicles overlap with or are included in the broader category of the opponent’s batteries for vehicles. Therefore, they are identical.

The contested alarms; theft prevention installations, electric include, as broader categories, the opponent’s alarms for vehicles. Since the Opposition Division cannot dissect ex officio the broader categories of the contested goods, they are considered identical to the opponent’s goods.

The contested spectacles; eyeglasses are included in the broader category of the opponent’s optical apparatus; therefore, they are identical.

The contested projection apparatus overlaps with or is included in the broader category of the opponent’s apparatus for reproduction of sounds or images; therefore, they are identical.

The broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images encompasses items dealing with recording, transmitting or reproducing sound or images. The contested smartphones; mobile telephones; cell phones; cellular phones; earphones are communication devices and peripheral devices that nowadays have the ability to record, transmit and reproduce sound and images. These goods have the same nature and purpose and their methods of use may be identical or very similar. Furthermore, these goods are sold in the same specialised stores or in the same sections of department stores. Therefore, these goods are considered at least highly similar.

The contested computer peripheral devices; couplers [data processing equipment] are similar to the opponent’s navigation apparatus for vehicles (on-board computer), as they usually have the same producers, relevant public and distribution channels. Furthermore, they are complementary.

The contested chargers for electric batteries are similar to the opponent’s batteries for vehicles, as they usually have the same producers, relevant public and distribution channels. Furthermore, they are complementary.

The contested covers for smartphones; cases for smartphones; protective films adapted for smartphones are accessories used for protecting smartphones. The opponent’s broad category of car telephones includes or overlaps with, inter alia, goods such as smartphones. Consequently, given the complementary character of covers, cases and protective films for smartphones, the contested goods are considered similar to a low degree to the opponent’s broad category mentioned above. The goods in question may also have the same distribution channels and relevant public.

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 or similar to various degrees are directed at the public at large and at a professional public.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

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).

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).

The earlier trade mark is a figurative mark containing the verbal element ‘ROADY’ depicted in slightly stylised letters. The English-speaking part of the public will naturally break the earlier mark down into elements that have a clear and specific meaning, namely the English word ‘ROAD’ and the letter ‘Y’. The word ‘ROAD’ will be understood by English speakers as meaning ‘a long piece of hard ground which is built between two places so that people can drive or ride easily from one place to the other’ (information extracted from Collins Dictionary on 17/01/2019 at https://www.collinsdictionary.com/dictionary/english/road). Bearing in mind the relevant goods in Class 12, this word is weak, as it alludes to the place of use of the goods. However, it has an average degree of distinctiveness in relation to the goods in Class 9, as it does not directly refer or allude to the characteristics of these goods. Furthermore, the verbal element ‘ROADY’ is placed against a black and red oval background, which is purely decorative in nature.

The contested mark is also a figurative mark; it contains the slightly stylised verbal element ‘roadwi’. The English-speaking part of the public will perceive the verbal element of the contested sign as a combination of the English word ‘road’ and the letters ‘wi’. The reasoning set out above as regards the meaning and distinctiveness of the element ‘road’ for the English-speaking part of the public also applies here.

Nevertheless, when taken as a whole, the verbal elements ‘ROADY’ of the earlier mark and ‘roadwi’ of the contested sign are fanciful words and are therefore distinctive to an average degree. The same applies to the remaining part of the public, which does not understand English and will perceive the verbal elements in both signs as meaningless words.

Neither of the marks has any element that is more dominant than others.

Visually, the signs coincide in the letters ‘ROAD’ and differ in their final letters, namely ‘Y’ in the earlier mark and ‘wi’ in the contested sign, as well as in the background and colours of the earlier mark and the stylisation of the verbal elements in both signs. As consumers generally focus on the beginning of a word and as verbal elements generally have a stronger impact in signs than figurative elements, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘ROAD’. The pronunciation differs in the sounds of the letters ‘Y’ and ‘wi’.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the element ‘ROAD’ in both marks. As the English-speaking part of the public will associate this element with the same meaning in both signs, the signs are conceptually similar to an average degree for this part of the public.

For the remaining part of the public, the signs are meaningless, and therefore a conceptual comparison is not possible and 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of some weak elements for the English-speaking part of the public, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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.

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/or 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 goods are partly identical and partly similar to various degrees, and the degree of attention of the relevant public varies from average to higher than average. 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).

The earlier mark has an average degree of distinctiveness, and the signs are visually and aurally highly similar; conceptually, either they are similar to an average degree or a comparison is not possible, as explained above. The verbal elements of the signs coincide in their first four letters, ‘ROAD’, and differ only in their final letters, ‘Y’ versus ‘wi’. Account must also be taken of the fact that verbal elements usually have a stronger impact on consumers than figurative elements; this is especially true in the present case, considering that the figurative element of the earlier mark merely serves as a background for its verbal element.

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

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

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 139 873 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cristina CRESPO MOLTO

Erkki MUNTER

Rasa BARAKAUSKIENE

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.