OPPOSITION No B 3 055 766

IdentPro GmbH, Camp-Spich-Str. 4, 53842 Troisdorf, Germany (opponent), represented by Kramer · Barske · Schmidtchen Patentanwälte Partg mbB, Landsberger Str. 300, 80687 München, Germany (professional representative)

a g a i n s t

Found Me AB, Westmansgatan 47, 582 16 Linköping, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 766 is upheld for all the contested goods, namely

Class 9: Mobile apps; software; burglar alarms; electronic tracking apparatus and instruments; navigation, guidance, tracking, targeting and map making devices; interactive computer software.

2. European Union trade mark application No 17 878 408 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 878 408 for the figurative mark , namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 12 934 535 for the word mark ‘finderbox’. 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.

1. The goods

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

Class 9: Scientific research and laboratory apparatus, educational apparatus and simulators; recorded content; devices for treatment using electricity; information technology and audiovisual equipment; magnets, magnetizers and demagnetizers; navigation, guidance, tracking, targeting and map making devices; optical devices, enhancers and correctors; safety apparatus and equipment; diving equipment.

The contested goods are the following:

Class 9: Mobile apps; software; burglar alarms; electronic tracking apparatus and instruments; navigation, guidance, tracking, targeting and map making devices; interactive computer software.

The contested mobile apps; software; interactive computer software are included in the broad category of the opponent’s recorded content. Therefore, they are identical.

The contested electronic tracking apparatus and instruments are included in the broad category of the opponent’s tracking devices. Therefore, they are identical.

Navigation, guidance, tracking, targeting and map making devices are identically contained in both lists of goods.

The contested burglar alarms are included in the broad category of the opponent’s safety apparatus and equipment. Therefore, they are identical.

2. 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. Given that the general public is more prone to confusion, the examination will proceed on this basis.

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.

3. The signs

finderbox
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

As regards the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). Therefore, at least a part of the relevant public will most likely single out the term ‘box’, which can have several meanings in several languages (for example, in Italian and Spanish, it refers to an individual compartment, whether for cars, hospitals, horses, babies, etc. (information extracted on 02/07/2019 from Garzanti at http://www.garzantilinguistica.it/ricerca/?q=box and Real Academia Española at https://dle.rae.es/?id=60KtpAI|60Lw5rQ). The remaining component ‘finder’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the Italian and Spanish-speaking part. For these consumers, ‘finder’ will be perceived as a meaningless string of letters and ‘box’ will be perceived as explained above. As, from the perspective of these consumers, these components have no meaning related to the goods at issue, they have a normal degree of distinctiveness, contrary to the applicant’s arguments.

The contested sign is a figurative mark composed of a single word, ‘finderoo’, depicted in yellow lower-case letters against a black background. Despite being graphically represented, the letters are standard. The black label is a purely decorative, non-distinctive element. Underneath the last two letters is depicted a curved line, which, according to the applicant, is designed to resemble, together with the last letters, a smiley face. There is a certain element of fancifulness in the representation of these elements but it should not be overestimated as this combination neither stands out visually nor is particularly elaborate. In addition, 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). This is also applicable in the case at hand regarding the figurative element in the form of a smiley (if perceived as such).

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs share seven letters in the same positions, ‘finder*o’, (out of nine letters of the earlier mark and eight letters composing the contested sign) with the eighth letter of the contested sign being a mere reproduction of a letter already included in the earlier mark (‘o’)). On the other hand, they differ in the letters ‘b’ and ‘x’ positioned respectively in the third-last and last position of the earlier mark, and in the additional letter ‘o’, the graphic representation and the figurative element of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in the languages used by the public under analysis, the pronunciation of the signs coincides in the fact that they are both composed of three syllables and that they coincide in the sound of the letters ‘finder*o’, present identically in both signs. The pronunciation differs in the sound of the letters ‘b’ and ‘x’ positioned respectively in the third-last and last position of the earlier mark, and in the sound of the additional letter ‘o’ of the contested sign. However, the letter ‘o’ is repeated in the contested sign. This may result in the longer pronunciation of this letter by some consumers but may have no impact on others who will pronounce the final two letters of the contested sign as one sound.

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

Conceptually, although the public in the territory under analysis will perceive the meaning of the component ‘box’ of the earlier mark as explained above, the other sign has no meaning in that territory (the smiley face in the contested sign, even if perceived, will have a lesser impact for the principle explained above). Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. 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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the goods have been found to be identical and they target the general and professional public, whose degree of attention will vary from average to high. Conceptually, the signs are not similar. However, they are visually similar to an average degree and aurally similar to at least an average degree, due to the fact that the contested sign is almost entirely included in the earlier mark.

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).

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).

As the goods are identical, the principle of interdependence plays an important role in determining that a likelihood of confusion on the part of the Italian- and Spanish-speaking public in this case exists. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 934 535. It follows that the contested sign 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

Justyna GBYL

Valeria ANCHINI

Edith Elisabeth VAN DEN EEDE

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.