OPPOSITION No B 3 061 940

Diputació de Barcelona, Rbla. Catalunya 126, 08036 Barcelona, Spain (opponent), represented by Isern Patentes Y Marcas, S.L., Avenida Diagonal 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Shen Zhen Cido Technology Co. Ltd., Flat 11b/F West Block Yi Hai Building Chuang Ye Road Nan Shan nul, Shenzhen, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 27/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 940 is partially upheld, namely for the following contested goods:

Class 9: All the goods applied for in this Class, except for batteries, electric for vehicles.

2. European Union trade mark application No 17 893 107 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 17 893 107 for the figurative mark . The opposition is based on Spanish trade mark registration No 3 650 718 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 and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images; computer hardware; software; electronic publications (downloadable); databases; computer database management software; computer database servers; computer servers; downloadable computer programs; computer programmes and computer software for providing online databases; electronic publications, downloadable; downloadable software; computer software for use on handheld mobile digital electronic devices and other consumer electronics; application software; software and applications for mobile devices.

Class 35: Data search in computer files for others; preparation and reproduction of documents; document reproduction; records management services, namely, document indexing for others; advertising and public information dissemination, marketing and promotional services; dissemination of advertising matter, advertising and promotional materials; compilation of information into computer databases; compilation and systematisation of information in data bases.

Class 42: Providing search engines for the internet; providing search engines for obtaining data via communications networks; operating search engines; electronic storage of files and documents; electronic storage of documents and archived emails; conversion of data or documents from physical to electronic media; digitisation of documents; providing temporary use of non-downloadable computer software for preparing delivery documents in computer networks, intranet and internet; design services related to the reproduction and publication of documents; design and development of computer hardware and software; design and development of computer programmes; hosting web sites.

Class 45: Legal information services; legal services; preparation of legal documents; vetting services.

The contested goods are the following:

Class 9: Data processing apparatus; computer software, recorded; readers [data processing equipment]; notebook computers; computer hardware; smartglasses; acoustic couplers; headphones; virtual reality headsets; audio- and video-receivers; earphones; portable media players; batteries, electric, for vehicles; battery chargers.

Class 28: Toys; scooters [toys]; novelty toys for parties; scale model vehicles; intelligent toys; parlour games; toy vehicles; Christmas trees of synthetic material; scale model kits [toys]; toy imitation cosmetics; matryoshka dolls; toy models; spinning tops [toys]; drones [toys]; piñatas.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 9

Computer hardware is identically contained in both lists of goods.

The contested computer software, recorded is included in the broad category of the opponent’s software. Therefore, they are identical.

The contested data processing apparatus includes, as a broad category, or overlaps with, the opponent’s computer hardware. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested acoustic couplers; headphones; virtual reality headsets; audio- and video-receivers; earphones; portable media players overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested notebook computers; readers [data processing equipment]; smartglasses are data processing apparatus, which can be closely related to some of the opponent’s goods such as computer hardware, because they are often offered by the same companies, sold through the same distribution channels and target the same public. Therefore, they are at least similar.

The contested battery chargers are crucial components for the efficient functioning of some of the apparatus of the opponent’s apparatus for recording, transmission or reproduction of sound or images, which may include cameras, mobile phones, etc. Therefore, these goods are complementary. Furthermore, the goods may coincide in their relevant public and distribution channels. Consequently, these goods are similar.

However, the remaining goods in this class, namely batteries, electric, for vehicles which are intended for use in vehicles only, have nothing in common with the opponent’s goods in Class 9, which are, in essence, data processing apparatus, software and apparatus for recording, transmission or reproduction of sound or images, that could justify finding a degree of similarity between them. Batteries for vehicles are quite different in nature and purpose, and are not in competition with the opponent’s goods. Moreover, contrary to the preceding paragraph (as regards battery chargers, not limited to vehicles), they are not complementary and usually have different distribution channels and origins. Moreover, these goods have nothing in common with the opponent’s services in Classes 35 (i.e. business management and advertising services), 42 (i.e. IT services) and 45 (i.e. legal and vetting services). Therefore, they are dissimilar.

Contested goods in Class 28

Contrary to what the opponent claims, the contested goods in this class, namely toys; scooters [toys]; novelty toys for parties; scale model vehicles; intelligent toys; parlour games; toy vehicles; scale model kits [toys]; toy imitation cosmetics; matryoshka dolls; toy models; spinning tops [toys]; drones [toys]; piñatas, which encompass a variety of toys, playthings and novelties, as well as Christmas trees of synthetic material, have nothing in common with the opponent’s goods in Class 9 (data processing apparatus, software and apparatus for recording, transmission or reproduction of sound or images). They do not have the same natures, purposes or methods of use. Moreover, they have different producers and are neither complementary nor in competition. The mere fact that, for instance, some of the contested goods, such as scooters [toys], function using software, hardware or audio-visual features (included in the opponent’s goods), is insufficient for a finding of similarity. These goods would simply be components of the finished toys, targeting the manufacturers of these goods. Nor do these goods have anything in common with the opponent’s services in Classes 35 (i.e. business management and advertising services), 42 (i.e. IT services) and 45 (i.e. legal and vetting services). Therefore, they are dissimilar.

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) target both the public at large and business customers with specific professional knowledge or expertise. The degree of attention will vary from average to higher than average, depending on the sophistication of the goods, the frequency of purchase and their price.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 are figurative marks containing the verbal element ‘CIDO’, accompanied by differing figurative elements. Neither has elements that could be considered clearly more dominant (visually eye-catching) than others.

The coinciding verbal element ‘CIDO’ is meaningless and, therefore, will be seen as an arbitrary and fanciful word. Consequently, its distinctiveness is average.

The device of the contested sign (to the left of its verbal element) may be perceived as a fanciful pattern or logo or, less likely, as a stylised letter ‘C’, as the opponent argues, since its shape can resemble or be linked to the initial letter of the verbal element ‘CIDO’. Either way, it does not evoke any meaning in relation to the relevant goods, therefore, its distinctive character is average.

Beside these elements, both signs contain figurative elements of a purely decorative nature (e.g. typeface and background), as can be seen in the depictions above, which do not detract consumers’ attention from the (distinctive) verbal elements to which more importance will be given.

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).

Visually, the signs coincide in the distinctive verbal element ‘CIDO’. The signs differ in the additional device element of the contested sign (regardless of how it is perceived) and in the remaining figurative aspects which will, however, have less impact on consumers, for the reasons explained above.

Therefore, they are visually highly similar.

Aurally, even though part of the public may see the device element as the letter ‘C’, it is unlikely to be pronounced since it will be perceived as a decorative depiction (and repetition) of the first letter of the contested sign’s verbal element, ‘CIDO’, as explained above.

Therefore, as both signs will likely be referred to by their (distinctive) verbal element ‘CIDO’, they are aurally identical.

Conceptually, neither sign has a meaning as a whole. Although part of the public may perceive the figurative element preceding the word ‘CIDO’ (in the contested sign) as a stylised letter ‘C’, which conveys the concept of the letter that it evidently represents, this element will nonetheless be perceived as a mere embellishment. Therefore, its presence cannot alter the perception of the contested sign. It follows that a conceptual comparison between the signs is not possible because neither of them convey any meaning and, therefore, the conceptual aspect has no relevant impact on 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.

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.

The goods are partly identical, partly similar (to varying degrees) and partly dissimilar. They target both the public at large and the professional public whose degree of attention may vary from average to higher than average. However, account is taken of the fact that even consumers who pay a higher 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 distinctiveness of the earlier mark is average.

The compared signs are visually similar to a high degree, aurally identical and conceptually not comparable. The signs coincide entirely in the most distinctive and important element ‘CIDO’ and the differences between the marks are confined to non-distinctive or secondary elements and aspects, for the reasons explained above. These differences, therefore, cannot outweigh the similarities.

Moreover, 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 undertaking or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines or to endow a trade mark with a new, fashionable image. In the present case, although the relevant public may detect the different stylisation of the conflicting signs, the likelihood that the public may perceive the contested sign as a restyling of the earlier mark is very real.

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 Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying degrees) 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.

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

Michele M. BENEDETTI - ALOISI

Birgit FILTENBORG

Valeria ANCHINI

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.