OPPOSITION No B 3 083 184

Kovel International S.A., calle 50. Edificio P.H. St. Georges Bank, piso 14, Ciudad de Panama, Panama (opponent), represented by RMA Legal S.L.P., Gran Vía del Marqués del Turia , 49, 6, 3, 46005, Valencia, Spain (professional representative)

a g a i n s t

Miliopoulos Dimitrios & Sia O.E., Andreou Georgiou 36, 54627, Thessaloniki, Greece (applicant), represented by Panagiotis Perivolaris, Ipsilon Alonion 24, 26224, Patras, Greece (professional representative).

On 01/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 184 is upheld for all the contested goods, namely

Class 9: Telephone charging cables; mobile telephone cases; protective films for mobile telephones; resistant for the of mobile; support stands for mobile telephones; support stands for mobile telephones for use in motor vehicles; selfie sticks as smartphone accessories; anti-theft stands for mobile telephones; mobile telephone batteries; spare parts for mobile telephones; fixed location telephones; cordless telephones; telephone switchboards; telephone exchange accessories; mobile phone.

2. European Union trade mark application No 18 019 303 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 18 019 303 namely against some of the goods in Class 9, for the figurative mark . The opposition is based on European Union trade mark registration No 16 115 231 for the word mark ‘VOLTE’. 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: Telecommunication equipment; telephones; cell phones; cordless telephones; radiotelephones; internet phones; car telephones; smartphones.

The contested goods are the following:

Class 9: Telephone charging cables; mobile telephone cases; protective films for mobile telephones; resistant for the of mobile; support stands for mobile telephones; support stands for mobile telephones for use in motor vehicles; selfie sticks as smartphone accessories; anti-theft stands for mobile telephones; mobile telephone batteries; spare parts for mobile telephones; fixed location telephones; cordless telephones; telephone switchboards; telephone exchange accessories; mobile phone.

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 telephone switchboards are included in the opponent's broad category of telecommunication equipment. Therefore, they are identical.

Cordless telephones; are identically covered by both trade mark sin dispute.

The contested fixed location telephones; mobile phone are included in the opponent's broad category of telephones. Therefore, they are identical.

The contested mobile telephone cases; telephone charging cables; protective films for mobile telephones; resistant for the of mobile; support stands for mobile telephones; support stands for mobile telephones for use in motor vehicles; selfie sticks as smartphone accessories; anti-theft stands for mobile telephones; mobile telephone batteries; spare parts for mobile telephones; telephone exchange accessories are similar to the opponent's telecommunication equipment because they are complementary and they coincide in distribution channels, relevant public and producer.

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 also at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs

VOLTE
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.

On one hand, the common element ‘VOLTE’ is not meaningful in certain territories, for example in those countries where Italian is not understood. On the other hand, the additional verbal elements of the contested sign are all meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark, ‘VOLTE’.

The contested figurative mark consists of the verbal elements ‘Volte-Tel’ depicted in fanciful blue characters, with the exception of the first letter ‘V’, that is red and larger. Below these elements the word ‘Communications’ is placed, reproduced using smaller red letters. At the bottom of the sign and even smaller element is placed, consisting of the expression ‘since 1999’ encompassed within a blue line placed both at its left and right.

As already explained, the element ‘VOLTE’ of both signs has no meaning for the relevant public and is, therefore, distinctive.

However, the element ‘Tel’, ‘communications’ and ‘since 1999’ can be all considered non-distinctive, since they all describe directly characteristics of the goods or the company that provide them. In particular, the elements ‘Tel’ and ‘communications’ make reference to the concepts of ‘telephone’ or ‘telecommunications’ while ‘since 1999’ will be seen as a simple indication of the year in which the activity of the opponent has started.

Also, the elements ‘Volte-Tel’ in the contested sign are co-dominant elements as they are the most eye-catching elements by virtue of their size and position.

Visually, the signs coincide in the only element of the earlier mark, ‘VOLTE’, that in the case of the contested sign is part of the dominant element of the sign besides being its only normally distinctive element. The signs differ in the stylization of the aforementioned element in the contested sign and in the additional elements ‘-Tel’, ‘communications’ and ‘since 1999’ of the contested sign, that are, respectively, dominant (-Tel) or secondary (communications and since 1999) but in any case are non-distinctive. The signs also visually differ to the extent that the contested sign contains, as a secondary element that would go rather unnoticed due to its simplicity and position, two horizontal lines that encompasses the expression ‘since 1999’.

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

Aurally, the pronunciation of the signs coincides in the sound of the element ‘VOLTE’, that is the only element of the earlier mark and the only normally distinctive element of the contested sign, apart of being also dominant.

The pronunciation differs in the elements ‘tel’, ‘communications’ and ‘since 1999’ of the contested sign, that are all non-distinctive.

In view of all the foregoing, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meanings of some of the elements of the contested sign, that are nonetheless non-distinctive, as explained above, the other sign has no meaning in that territory. 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.

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

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods in Classes 9 covered by the trade marks in dispute are identical or similar and target the public at large and also business customers with specific professional knowledge or expertise. The degree of attention is considered to be average. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually similar to, at least, an average degree and aurally similar to a high degree by virtue of the fact that they share the only element of the earlier mark ‘VOLTE’, that corresponds to the most distinctive and co-dominant element of the contested sign.

The differences are relegated to elements that within the contested sign are codominant or secondary, but in any case non-distinctive. In particular, these elements are the co-dominant ‘-tel’, and the secondary ‘communications’ and ‘since 1999’. The figurative elements of the contested sign, namely the tow lines at the bottom, are also not particularly distinctive.

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).

Considering all the above, there is a likelihood of confusion, at least but not necessarily only, on the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 115 231. It follows that the contested trade mark must be rejected for all the contested goods.

For the sake of completeness, the Opposition Division acknowledges that in its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘volt’, which is the standard unit used to measure how strongly an electrical current is sent around an electrical system.

In support of its argument the applicant refers to two European Union trade mark registration and to two international trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘volt’. Under these circumstances, the applicant’s claims must be set aside.

Finally, the applicant argues that its EUTM has a reputation and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Consequently, the applicant’s claims in this regard must be also set aside.

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, 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

Francesca CANGERI

Andrea VALISA

Aurelia PEREZ BARBER

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.