OPPOSITION No B 3 048 959

Stage Tec Entwicklungsgesellschaft für professionelle Audiotechnik mbH, Tabbertstr. 10, 12459 Berlin, Germany (opponent), represented by Patentanwalte Bressel und Partner MbB, Park Kolonnaden Potsdamer Platz 10, 10785 Berlin, Germany (professional representative)

a g a i n s t

Music Group IP Ltd., P.O. Box 146, Trident Chambers, Wickhams Cay, Road Town, Tortola, British Virgin Islands (applicant), represented by Frank Theilmann, Music Group Services EU GmbH, Otto-Brenner-Str. 4a, 47877 Willich, Germany (employee representative).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 959 is upheld for all the contested goods.

2. European Union trade mark application No 17 565 714 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 565 714 ‘AURATONE’, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 5 865 076 ‘AURATUS’. 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 9: Apparatus for recording, transmission or reproduction of sound or images; apparatus for the digital and analogue mixing, forwarding, processing and storage of sound and/or image signals for use on radio and television, and for live performances and shows, in particular mixing desks; electrical connecting parts; electric cables; wires; conductors; electric display apparatus; computer software for manipulating digital or analogue sound data for regulating, sound quality improvement and/or compression purposes; computer software for controlling and regulating sound engineering installations; electronic display boards; sound receiving apparatus; remote-control apparatus; interfaces; electric regulating apparatus; plugboards; switching equipment; distribution consoles; switches; sound recording apparatus; sound locating instruments; sound transmitting apparatus; sound amplifiers; sound-reproducing apparatus; memory card readers and writers; apparatus for inscribing and/or reading optical and/or magnetic data carriers; modules, namely printed circuit boards; and checking (supervision) apparatus for the aforesaid goods.

The contested goods are the following:

Class 9: Apparatus for creating, recording, transmission, processing, retrieval, manipulation and reproduction of sound; microphones; microphone preamplifiers; direct input boxes; mixing consoles; dynamic processors; equalizers; crossovers; audio controllers; audio interfaces; headphone amplifiers; headphones; loudspeakers; computer software for creating, recording, transmission, processing, retrieval, manipulation and reproduction of sound; manuals in electronic format; all included in Class 9.

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.

As a preliminary remark it is noted the specification of the contested goods contains the wording all included in Class 9. Since this wording does not affect the outcome of the comparison, it will be omitted when referring to the contested goods to avoid repetition.

The contested headphones; loudspeakers are included in the broad category of the opponent’s sound reproducing apparatus. Therefore, they are identical.

The contested audio interfaces are included in the opponent’s broader category of interfaces. Therefore, they are identical.

The contested microphones are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound. Therefore, they are identical.

The contested dynamic processors; crossovers; audio controllers; direct input boxes; equalizers; apparatus for creating, recording, transmission, processing, retrieval, manipulation and reproduction of sound; mixing consoles overlap with the opponent’s apparatus for the digital and analogue mixing, forwarding, processing and storage of sound and/or image signals for use on radio and television, and for live performances and shows, in particular mixing desks. The term in particular used in the opponent’s specification of goods is not restrictive and merely introduces an example of a specific good included in the category. Therefore, they are identical.

The contested microphone preamplifiers; headphone amplifiers are included in the broad category of the opponent’s sound amplifiers. Therefore, they are identical.

The contested computer software for creating, recording, transmission, processing, retrieval, manipulation and reproduction of sound are highly similar or identical to the opponent’s computer software for manipulating digital or analogue sound data for regulating, sound quality improvement and/or compression purposes because these goods have the same nature, field of application, producer, channels and public. Furthermore, these categories contain software used for manipulating sound data which cannot be filtered from the rest.

The contested manuals in electronic format are similar to the opponent’s computer software for manipulating digital or analogue sound data for regulating, sound quality improvement and/or compression purposes as they usually coincide in producer, relevant public and 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 found to be at least similar target the public at large and/or a professional public. 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

AURATUS	AURATONE
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).

Both signs consist of a single word, ‘AURATUS’ for the earlier mark and ‘AURATONE’ for the contested sign.

The average consumer normally perceives a mark as a whole and does not analyse its various details. In the present case, a significant part of the public will perceive the signs as meaningless, as a whole, and will not perceive any identifiable component therein. Therefore, they are distinctive.

Visually, the signs coincide in their first five letters ‘AURAT’ and differ in their endings, ‘US’ for the earlier mark versus ‘ONE’ for the contested sign.

The coincidence in the initial letters has an important visual impact on consumers since it is usually the beginning of signs that first catches their attention. In addition, the Opposition Division concurs with the opponent that, although the contested sign has one more letter than the earlier mark, the signs give the impression of having the same length.

Therefore, 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 their initial five letters ‘AURAT’, while it differs in the sound of their last letters, ‘US’ of the earlier mark versus ‘ONE’ of the contested sign.

While for part of the public, for example, Spanish consumers, the marks differ in rhythm and intonation, for another part of the public, for example, French consumers, the signs have the same number of syllables and hence coincide in rhythm and intonation.

Therefore, the signs will be perceived as aurally similar to an average degree by part of the public, whereas, for another part of the public, they are aurally similar to a low degree.

Conceptually, neither of the signs have a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

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).

In the present case, the relevant public is composed of both non-professionals and professionals. The degree of attention when purchasing the relevant goods will vary from average to high.

Furthermore, the contested goods are identical or similar (to a high degree for some) to the opponent’s goods. The signs are visually similar to an average degree, aurally similar to an average or low degree and they cannot be compared conceptually.

Taking into account the principle of interdependence, given that the contested goods are identical or similar (to a high degree for some) to the opponent’s goods and bearing in mind the visual and aural similarity between the marks due to the coincidence in the initial letters ‘AURAT’ of each sign (which is the part of signs to which consumers pay most attention), the differences between their last letters are insufficient to rule out the possibility that the relevant consumers, when encountering the contested sign, could confuse it with the earlier mark.

Moreover, 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) and 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).

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 territory trade mark registration No 5 865 076. 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

Solveiga BIEZA

Marine DARTEYRE

Erkki MÜNTER

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.