OPPOSITION No B 3 054 519

LuxT, 19, rue Geespelt, 3378, Livange, Luxembourg (opponent), represented by Sarrut Avocats, 20 avenue Franklin D. Roosevelt, 75008, Paris, France (professional representative)

a g a i n s t

Shenzhen Zhihui Weishi Electronic Co., Ltd., Workshop 1 (501), Yushan Second, Industrial Park, Shangwu Guangming Road, Shiyan Street, Baoan District, Shenzhen, China (applicant), represented by Rolim Mietzel, Wohlnick & Calheiros Llp, Graf-Adolf-Straße 14, 40212, Düsseldorf, Germany (professional representative).

On 16/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 519 is upheld for all the contested goods, namely

Class 9: Monitoring apparatus, electric; video recorders; camcorders; television cameras; dashboard cameras; video monitors; car videorecorders; rearview cameras for vehicles; network surveillance cameras; theft prevention installations, electric; electric door bells; endoscopy cameras for industrial purposes; electric and electronic security apparatus and instruments; electric and electronic video surveillance installations.

2. European Union trade mark application No 17 866 818 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 17 866 818 for the word mark ‘Sinis Security’, namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 7 328 016 for the 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 9: Scientific, photographic, optical, measuring, checking (supervision) and life-saving apparatus and instruments; electric and electronic signalling, measuring, checking (supervision), monitoring, observation apparatus and instruments; accident, burglary and theft protection devices; theft, fire and burglar alarms and warning apparatus; temperature, humidity, gas and radiation analysis and control instruments; fire detectors, fire-extinguishing apparatus; transmitting sets (telecommunication) and transmitters of electronic signals; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; intercommunication apparatus, cameras (photography), radios, television apparatus; instruments and apparatus for the computerised management, supervision and control of sites and installations, in particular industrial and commercial sites and installations and business parks; data processing equipment and computers, scanners, readers, central data processing units (processors); software, recorded computer programs, programs for operating systems, all the aforesaid computer products only in relation to the field of security of goods and persons, in particular in the field of buildings, installations and industrial sites; the aforesaid products not relating to credit cards and payment cards, ATMs, financial and monetary services and services relating to credit cards and payment cards.

The contested goods are the following:

Class 9: Monitoring apparatus, electric; Video recorders; Camcorders; Television cameras; Dashboard cameras; Video monitors; Car videorecorders; Rearview cameras for vehicles; Network surveillance cameras; Theft prevention installations, electric; Electric door bells; Endoscopy cameras for industrial purposes; Electric and electronic security apparatus and instruments; Electric and electronic video surveillance installations.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 monitoring apparatus, electric are included in the broad category of the opponent’s monitoring apparatus and instruments. Therefore, they are identical.

The contested video recorders; camcorders; television cameras; dashboard cameras; video monitors; car videorecorders; rearview cameras for vehicles; network surveillance cameras; endoscopy cameras for industrial purposes; electric and electronic video surveillance installations are included in or overlap with, the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested theft prevention installations, electric overlap with the opponent’s accident, burglary and theft protection devices. Therefore, they are identical.

The contested electric and electronic security apparatus and instruments are similar to the opponent’s life-saving apparatus and instruments. These goods relate both to safety equipment and consequently they share the same purpose. Moreover, these goods are often manufactured by the same enterprise.

The contested electric door bells are similar to the opponent’s signalling apparatus and instruments. The goods target the same relevant public, share the same distribution channels and have the same producers.

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 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

	Sinis Security
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 assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The term ‘SECURITY’ is an English word likely to be understood also by part of the non-English speaking public, as the equivalent is similar in some languages, such as in French (‘securité’). For this part of the public, it will be seen as informing the consumers that the goods at issue are for security purposes, namely that they protect from danger/threat. Consequently, it is considered non-distinctive as it indicates the purpose of the goods. For another part of the public, such as the German or Polish-speaking part, this element is meaningless and therefore distinctive to an average degree.

The remaining verbal elements of the signs, ‘seris’ and ‘Sinis’, are meaningless and therefore distinctive to an average degree.

In the earlier mark the blue background and the red dot are considered purely decorative elements and therefore non-distinctive. Moreover, 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).

As regards the dominance of the elements of the earlier mark, the term ‘SECURITY’ is secondary due to its smaller size and position.

Visually, the signs coincide in the sequence of letters ‘S**IS’ and the term ‘SECURITY’. However, they differ in the second and third letters of the first verbal elements of the signs and the figurative elements and typeface, all in the earlier mark.

The initial verbal elements of the signs coincide in their first and the last two letters and the second verbal elements of the signs are identical. Moreover, for the reasons outlined above, consumers will pay much less attention to the figurative elements of the earlier mark.

Therefore, taking into account the global impression produced by the signs, for the part of the public that does not understand the word ‘SECURITY’, the signs are similar above an average degree. For the remaining part, the signs are similar to a lower than 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 sequence of letters ‘‘S**IS’ and the term ‘SECURITY’. The initial verbal elements of the signs share the same length and structure.

It is therefore considered that for the part of the public that does not understand the word ‘SECURITY’, the signs are aurally similar above an average degree. For the remaining part, the signs are aurally similar to a lower than average degree.

Conceptually, for the part of the public which does not understand the term ‘SECURITY’, neither of the signs has a meaning. Since a conceptual comparison is not possible, for this part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the remaining part of the public, although the coinciding word ‘SECURITY’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. 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.

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, despite the presence of a non-distinctive element in the mark, for part of the public, as stated above in section c) of this decision.

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).

Account should also be 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).

In the present case, the goods have been found identical and similar and the degree of attention of the relevant public may vary from average to higher than average.

The earlier mark has a normal degree of distinctiveness as a whole and the signs have been found, at least for the part of the public for which the word ‘SECURITY’ is meaningless, visually and aurally similar above an average degree, on account of their considerable coincidences in their respective verbal elements. For this part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs.

Considering all the above, bearing in mind the principle of interdependence and imperfect recollection, and the overall similarities between the signs, the Opposition Division finds that there is a likelihood of confusion for a significant part of the European Union public, even for goods in relation to which a higher than average degree of attention may be displayed by consumers (who will still need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Bearing in mind that it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69), the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 328 016. 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.

The Opposition Division

Catherine MEDINA

Jorge ZARAGOZA GÓMEZ

Begoña URIARTE VALIENTE

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.