OPPOSITION Nо B 3 061 837

Guangdong Oppo Mobile Telecommunications Corp., Ltd., No.18 Haibin Road, Wusha, Chang’an, 523860 Dongguan, Guangdong, People’s Republic of China (opponent), represented by Pons Consultores De Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Appotronics Corporation Limited, 20f‑22f, High-tech Zone Union Tower, No.63, Xuefu Road, Nanshan District, Shenzhen, Guangdong Province, People’s Republic of China (applicant), represented by Greyhills Rechtsanwälte Partnerschaftsgesellschaft Mbb, Severinskloster 5, 50678 Köln, Germany (professional representative).

On 17/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 837 is partially upheld, namely for the following contested goods:

Class 9: Data processing apparatus; integrated circuit cards and components; downloadable electronic game software for use on mobile and cellular phones and handheld computers; computer software for accessing information directories that may be downloaded from the global computer network; electronic agendas; rotating lights [signaling]; apparatus for transmission of communication; recorded content; information technology and audio-visual, multimedia and photographic devices; safety, security, protection and signaling devices; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; audio and video receivers; camcorders; wireless receivers; computer application software for mobile phones; portable media players; transparency projection apparatus; projection screens; epidiascopes; optical lanterns; light emitting diodes (LEDs); optical devices, enhancers and correctors; fluorescent screens; video screens; video tapes with recorded animated cartoons; projectors for the entertainment industry; video projectors; television sets; slide projectors; picture projectors; LCD projectors; multimedia projectors; televisions; computer software for application and database integration; cabinets for loudspeakers; remote controls for televisions; chargers for electric batteries; electric converters; electric wires.

2. European Union trade mark application No 17 627 605 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 627 605 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 11 857 562, (figurative mark). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM registration No 11 857 562, which is not the subject of a proof of use request.

a) The goods

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

Class 9: Computers; electronic pocket translators; video disc player; power amplifiers; cabinets for loudspeakers; speech reread apparatus; telephone apparatus; incoming call displays; television apparatus; (audio) CD players, radio’s, loudspeakers, cassette players, video tape players, MP3 players; computer software not related to intellectual property rights and mobile telephones; phonograph records, compact discs and pre-recorded audio tapes; re-writable and recordable optical discs; pre-recorded video tapes and video discs; blank compact discs, audio tapes and video tapes; audio conferencing equipment comprised of headphones, wire and wireless microphones, audio mixers and accessories therefor; video cameras and accessories therefor, video monitors and accessories therefor; video conferencing systems comprised of video monitors, video cameras, video controllers, cabinets, microphones and accessories therefor, video projectors and accessories therefor, large screen video display units and accessories therefor; video printers, video camera housings, camcorders; computer game programs; phototelegraphy apparatus; portable telephones; satellite navigational apparatus; switchboards; sound transmitting apparatus; headphones players; DVD-portable media players; cameras (photography); flashlights (photography); wires (telephone-); plugs, sockets and other contacts (electric connections); connections, electric alarms batteries, electric battery chargers; none of the foregoing being in respect of sporting goods.

Class 28: Games (not in respect of sporting activities) adapted for use with television receivers only.

The contested goods are the following:

Class 9: Data processing apparatus; integrated circuit cards and components; downloadable electronic game software for use on mobile and cellular phones and handheld computers; computer software for accessing information directories that may be downloaded from the global computer network; electronic agendas; rotating lights [signaling]; apparatus for transmission of communication; recorded content; information technology and audio-visual, multimedia and photographic devices; safety, security, protection and signaling devices; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; audio and video receivers; camcorders; wireless receivers; computer application software for mobile phones; portable media players; transparency projection apparatus; projection screens; epidiascopes; optical lanterns; light emitting diodes (LEDs); optical devices, enhancers and correctors; fluorescent screens; video screens; video tapes with recorded animated cartoons; projectors for the entertainment industry; video projectors; television sets; slide projectors; picture projectors; LCD projectors; multimedia projectors; televisions; computer software for application and database integration; cabinets for loudspeakers; eyeglasses; remote controls for televisions; chargers for electric batteries; electric converters; electric wires.

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 opponent’s goods in Class 9 include the restriction none of the foregoing being in respect of sporting goods. As this restriction is likely to affect only goods meant for use in sports, it will not in any way affect the nature and scope of protection of the opponent’s goods, which are mainly IT, video and audio or navigational goods, and not used directly for sport. Therefore, it will not be mentioned in the following comparisons.

Cabinets for loudspeakers; televisions; chargers for electric batteries; camcorders are identically contained in both lists of goods (including synonyms).

The contested data processing apparatus includes, as a broader category, the opponent’s computers. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested downloadable electronic game software for use on mobile and cellular phones and handheld computers is included in the broad category of, or overlaps with, the opponent’s computer game programs. Therefore, they are identical.

The contested computer software for accessing information directories that may be downloaded from the global computer network; computer application software for mobile phones; computer software for application and database integration overlap with the opponent’s computer software not related to intellectual property rights and mobile telephones. Therefore, they are identical.

The contested electronic agendas; information technology and audio-visual, multimedia are included in the broad category of, or overlap with, the opponent’s computers. Therefore, they are identical.

The contested apparatus for transmission of communication includes, as a broader category the opponent’s sound transmitting apparatus. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested recorded content includes, as a broader category, or overlaps with, the opponent’s pre-recorded video tapes and video discs. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested safety, security, protection and signaling devices include, as a broader category, or overlap with, the opponent’s sound transmitting apparatus, as both of these broad categories include goods such as sound alarms and warning equipment. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested navigation, guidance, tracking, targeting and map making devices include, as a broader category, the opponent’s satellite navigational apparatus. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested audio and video receivers are included in the broad category of, or overlap with, the opponent’s sound transmitting apparatus and television apparatus. Therefore, they are identical.

The contested wireless receivers overlap with the opponent’s audio conferencing equipment comprised of headphones, wire and wireless microphones, audio mixers and accessories therefor. Therefore, they are identical.

The contested portable media players overlap with the opponent’s video disc player. Therefore, they are identical.

The contested video tapes with recorded animated cartoons are included in the broad category of the opponent’s pre-recorded video tapes and video discs. Therefore, they are identical.

The contested television sets are included in the broad category of the opponent’s television apparatus. Therefore, they are identical.

The contested integrated circuit cards and components are similar to the opponent’s computers, as they usually coincide in producer and distribution channels. Furthermore, they are complementary.

The contested rotating lights [signaling] are similar to the opponent’s sound transmitting apparatus because they coincide in distribution channels, end user and producer.

The contested photographic devices are similar to the opponent’s computers. They usually coincide in producer, relevant public and distribution channels.

The contested optical device is similar to the opponent’s computers. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested remote controls for televisions are similar to the opponent’s television apparatus because it is common for some accessories to be produced by the manufacturer of the main product. Consequently, the consumer may expect the main product and accessories to be produced under the control of the same entity, especially when they are distributed through the same channels.

The contested optical lanterns are devices ‘for projecting positive transparent pictures from glass or film onto a reflecting screen; it consists of a concentrated source of light, a condenser system, a holder (or changer) for the slide, a projection lens, and (usually) a blower for cooling the slide. Also known as slide projector’ (information extracted from The Free Dictionary on 17/11/2020 at https://encyclopedia2.thefreedictionary.com/optical+lantern). Together with transparency projection apparatus; projection screens; epidiascopes; fluorescent screens; video screens; projectors for the entertainment industry; video projectors; slide projectors; picture projectors; LCD projectors; multimedia projectors they are considered at least similar to the opponent’s video conferencing systems comprised of video monitors, video cameras, video controllers, cabinets, microphones and accessories therefor, video projectors and accessories therefor, large screen video display units and accessories therefor as they have the same purpose, distribution channels, end user and producer.

The contested optical enhancers and correctors are similar to the opponent’s cameras (photography) because the contested goods are often used as accessories to the opponent’s goods. It is common for some accessories to be produced by the manufacturer of the main product. Consequently, the consumer may expect the main product and accessories to be produced under the control of the same entity, especially when they are distributed through the same channels.

The contested electric converters; light emitting diodes (LEDs); electric wires are similar to a low degree to the opponent’s plugs, sockets and other contacts (electric connections) because they coincide in distribution channels, end user and producer.

The contested measuring, detecting and monitoring instruments, indicators and controllers are similar to a low degree to the opponent’s plugs, sockets and other contacts (electric connections). The contested goods include goods such as equipment for measuring electricity, while the opponent’s goods might be parts and fittings of this equipment. The goods under comparison are often produced and/or sold by the same undertaking that manufactures the end product. Furthermore, they often target the same purchasing public, which may also expect the components to be produced by, or under the control of, the manufacturer of the end product.

The contested eyeglasses are dissimilar to all the opponent’s goods in Classes 9 and 28 because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

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 varying degrees 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

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 figurative mark, consisting of the verbal element ‘oppo’ depicted in bold, slightly stylised lower-case letters. The contested mark is also a figurative mark. It depicts the verbal element ‘APPO’ in bold, standard upper-case letters.

The stylisation of the signs’ verbal elements will merely be perceived as a graphical means of bringing the verbal elements to the attention of the public. Therefore, its impact on the comparison of the signs will be limited.

Contrary to the applicant’s opinion, neither sign has any meaning for the relevant public. Therefore, they are distinctive. There is no reason to assume that the relevant public will divide the term ‘app’ from ‘APPO’ in order to perceive a concept. Moreover, according to settled case-law, word marks should not be artificially dissected. This is only appropriate if the relevant public will clearly perceive the components in question as separate elements, which is not the case here.

Visually, the signs coincide in their letters ‘ppo’, placed in the same position within their verbal elements. However, they differ in their first letters – ‘o’ of the earlier mark and ‘A’ of the contested sign – and in their slight stylisations.

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 letters ‘ppo’, present identically, and in the same position, in both signs. The pronunciation differs in the sound of their first letters – ‘o’ of the earlier mark and ‘A’ of the contested sign. The signs have the same structure and rhythm. The differing letters are both vowels.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has 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.

On 17/12/2019, in its observations on the proof of use request, the opponent claimed that its mark had a high degree of distinctiveness due to extensive use. The opponent had not explicitly claimed – either in its submissions within the relevant opposition period or within the substantiation period – that its mark was particularly distinctive by virtue of intensive use or reputation. The claim of enhanced distinctiveness on 17/12/2019 was late, and the Office has no discretionary power to accept belated evidence for enhanced distinctiveness.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on their 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

According to the case-law of the Court of Justice, in determining the existence of a likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are partly identical, partly similar to varying degrees, and partly dissimilar. They target both general and specialised publics with a degree of attention that varies from average to high. The distinctiveness of the earlier mark is normal.

The signs coincide in the letters ‘ppo’, placed in the same position within them. They differ in their first letters (‘o’ versus ‘A’), both being vowels. The signs also differ in their slight stylisation, which has a limited impact on the comparison. Therefore, the signs are visually and aurally similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs since a conceptual comparison is not possible.

The length of signs may influence the effect of any differences between them. The signs in question have four letters each, three of which coincide. The coinciding letters are placed in the same positions within the signs, and the differing letters are both vowels. Therefore, the similarities outweigh the differences between the signs and the overall similarity is sufficient to find a likelihood of confusion for the relevant public.

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 main differences between the signs are their initial letters and the stylisation of their respective verbal elements. However, this stylisation has less impact on consumers than the verbal element itself. As the applicant argues, in terms of recognition and recall, the beginning of a trade mark tends to be more important, since the first part of a sign is generally the part that catches consumers’ attention and will be remembered more clearly than the rest of the sign. However, this does not alter the basic principle that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52).

In its observations, the applicant argues that it owns several registrations in the European Union that include the word ‘APPO’, some of which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2009:503, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion found between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during proceedings concerning relative grounds for refusal, the applicant duly demonstrates that this coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant refers to a previous national decision to support its arguments, namely a decision from the Japanese Patent Office. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings as there is not enough information on the factual/legal background or the evidence submitted in the quoted case.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s EUTM registration No 11 857 562.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, even to a low degree, to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

The opponent has also based its opposition on earlier European Union trade mark registration No 2 730 703, ‘OPPO’ (word mark), registered for computers; electronic pocket translators; video disc player; power amplifiers; cabinets for loudspeakers; speech reread apparatus; telephone apparatus; incoming call displays; television apparatus; games adapted for use with television receivers only; (audio) CD players, radio’s, loudspeakers, cassette players, video tape players, MP3 players; computer software not related to intellectual property rights and mobile telephones; phonograph records, compact discs and pre-recorded audio tapes; re-writable and recordable optical discs; pre-recorded video tapes and video discs; blank compact discs, audio tapes and video tapes; audio conferencing equipment comprised of headphones, wire and wireless microphones, audio mixers and accessories therefor; video cameras and accessories therefor, video monitors and accessories therefor; video conferencing systems comprised of video monitors, video cameras, video controllers, cabinets, microphones and accessories therefor, video projectors and accessories therefor, large screen video display units and accessories therefor; video printers, video camera housings, camcorders in Class 9, advertising; publicity; shop window dressing; personnel management consultation; relocation services for businesses; office machines and equipment rental; systematisation of information into computer databases, all not related to intellectual property right; distribution of promotional items; organisation of exhibitions for commercial or advertising purposes; business consultation and mediation in buying and selling of electronic apparatus and instruments, computer hardware and software, all aforementioned goods not related to intellectual property tights, telecommunication apparatus and instruments in Class 35, construction information; construction; heating apparatus installation and repair; electric and electronic appliance installation, maintenance and repair; photographic apparatus repair; dry cleaning; telephone installation and repair, installation, repair, maintenance services related to computer hardware and telecommunication apparatus and instruments in Class 37, television broadcasting, information about telecommunication; telecommunication (information about); message sending; communication by telephone; mobile telephone communication; paging services; satellite transmission; electronic mail; computer aided transmission of messages and images in Class 38, education information; educational services and teaching, all not related to intellectual property rights; organisation of competitions (education or entertainment); lending libraries; publication of texts (other than publicity texts); rental of show scenery; amusements; production and performance of television and theatrical programmes, films and video; rental of films and videos; rental of radio and television sets; photography and photographic reporting in Class 41 and computer software design, all not related to intellectual property rights; photography; photographic reporting; rental of vending machines; mechanical research especially with regard to electric and electronic apparatus; architectural consultation; design and development services related to electronic apparatus and instruments, computer hardware, telecommunication apparatus and instruments; design and development services related to computer software, not related to intellectual property rights in Class 42.

This other earlier right invoked by the opponent covers the same goods in Class 9 as the earlier mark already analysed, and different services in Classes 35, 37, 38, 41 and 42. The outcome cannot be different with respect to goods in Class 9 for which the opposition has already been rejected. The rest of the services covered by earlier European Union trade mark registration No 2 730 703 are clearly different to the contested eyeglasses. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, they are neither complementary nor in competition and target different end users. Therefore, even assuming that the use of this mark is proven for all the goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. No likelihood of confusion exists with respect to those 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. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tzvetelina IANTCHEVA

Francesca DRAGOSTIN

Rosario GURRIERI

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.