OPPOSITION No B 3 082 402

Rheinmetall AG, Rheinmetall Platz 1, 40476, Düsseldorf, Germany (opponent)

a g a i n s t

Shenzhen Chasing-Innovation Technology Co., Ltd., #506, Xita in Digital Cultural Industry base of Shennan 10128 Nanshan, Nantou Street, 518052, Nanshan District, Shenzhen, China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 20/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 402 is partially upheld, namely for the following contested goods:

Class 9: Camcorders; cameras [photography]; cases especially made for photographic apparatus and instruments; virtual reality headsets; computer programs [downloadable software].

2. European Union trade mark application No 18 023 513 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 023 513 for the figurative mark , namely against all the goods in Class 9. The opposition is based on international trade mark registration No 1 148 593 designating the European Union for the word mark ‘GLADIUS’. 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: Optical and/or electronic device for the soldiers with the function of target direction, as laser pointers, photometers, sensor and sighting systems, as sighting telescopes, range finders, laser beam emitting devices, with target marking system, illumination regulators included in this class, including the aforesaid for communication devices; optical and/or electronic device with variable laser function; optical and/or electronic device in particular for weapons, vests and helmet-mounted sighting systems, range finders, laser beam emitting devices, with target marking system, illumination regulators included in this class.

The contested goods are the following:

Class 9: Camcorders; cameras [photography]; cases especially made for photographic apparatus and instruments; virtual reality headsets; computer programs [downloadable software]; joysticks for use with computers, other than for video games; wearable video display monitors; interactive touch screen terminals; downloadable image files; vehicle radios.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The terms ‘in particular’, ‘as’, ‘including’, used in the opponent’s list of goods, indicate 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 camcorders; cameras [photography]; cases especially made for photographic apparatus and instruments are similar to the opponent’s optical device as they can coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested computer programs [downloadable software] are at least similar to a low degree to the opponent’s optical device as they at least coincide in producer, relevant public and distribution channels.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), electronic device does not provide a clear indication of what goods are covered, as it simply states that it is a device that accomplishes its purpose electronically but not what the goods are (01/12/2016, T-775/15, Ferli, EU:T:2016:699, § 36). It covers a wide range of goods that may have very different characteristics and/or purposes, in very different areas, such as navigation systems, electronic circuits, amplifiers, game consoles, televisions or video cameras; it may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors. As explained above, the term ‘in particular’, used in the opponent’s list of goods, indicates that the specific 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 (see the judgment of 09/04/2003, T-224/01, Nu Tride, EU:T:2003:107). However, in the present case, these examples expressly identify the goods of those covered by the vague term, thus enabling the Opposition Division to carry out a comparison. Therefore, the comparison of the goods, insofar as the opponent’s goods cover electronic device, will only proceed on the basis of the goods expressly listed after the term ‘in particular’, that is electronic device in particular for weapons, vests and helmet-mounted sighting systems, range finders, laser beam emitting devices, with target marking system, illumination regulators included in this class.

The contested virtual reality headsets are head-mounted devices that provide virtual reality for the wearer. While it is true that virtual reality (VR) headsets are currently widely used with video games, they are also used in other applications, including for training and for example in the military. They comprise a stereoscopic head-mounted display (providing separate images for each eye), stereo sound, and head motion tracking sensors (which may include gyroscopes, accelerometers, magnetometers, structured light systems etc.). Some VR headsets also have eye tracking sensors and gaming controllers. They are worn over the eyes like a pair of goggles, blocking out all external light and show an image on high-definition screens in front of the eyes. Therefore, they are similar to at least a low degree to the opponent’s optical and/or electronic device in particular for (weapons, vests and) helmet-mounted sighting systems (range finders, laser beam emitting devices), with target marking system, illumination regulators included in this class, which are goggles/head-mounted displays. They can have the same purpose, method of use, can target the same public and can be produced by the same undertakings.

The same reasoning cannot be applied to the contested wearable video display monitors; interactive touch screen terminals; joysticks for use with computers, other than for video games; downloadable image files; vehicle radios which are dissimilar to all the opponent’s goods as they do not have any point of contact. They have different natures, purposes and methods of use, different producers, relevant public and distribution channels and they are not complementary nor in competition with each other.

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 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

GLADIUS
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 signs can only be differentiated by the stylisation of the contested sign, in which the letter ‘A’ is represented as two triangles one inside the other and the letter ‘D’ is ‘leaning’ on the previous letter. However, although some of the letters are stylised, they are readily recognisable and the common verbal component ‘GLADIUS’ is readily perceptible as such on behalf of the relevant public. This word designates a short sword used by Roman legionaries (information extracted from Collins on 14/04/2020 at https://www.collinsdictionary.com/dictionary/english/gladius), and will be understood by English-speakers as well as in several parts of the EU due its Latin origin. However, it is not necessary to enter into an assessment of the distinctiveness of this element as it is identical in both cases and thus on equal footing.

Consequently, the signs are conceptually and aurally identical whilst, due to the stylisation of the verbal element in the contested sign, they are visually highly 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 direct or clear meaning in relation to 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

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).

The goods are partly dissimilar and partly similar to varying degrees. The similar goods target both the general and the professional public who will display a degree of attention varying from average to high.

The only differing element of the contested sign, namely the stylisation of the verbal element, is clearly of a secondary nature within the overall impression of the signs. As consumers are accustomed to the stylisation of verbal elements in marks, they will perceive it as merely a decorative depiction of the word element and will not pay significant attention to these features as indicators of commercial origin.

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). This goes true also for the professional public that also needs to rely on their imperfect recollection. 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 near identity of the signs justifies the conclusion that there is a likelihood of confusion including for those goods deemed similar to a low degree. It is possible that the average consumer may be led to believe that the same undertaking is responsible for the production of those goods.

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 international registration designating the European Union.

It follows from the above that the contested trade mark must be rejected for the goods found to be 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

Meglena BENOVA

Valeria ANCHINI

Tzvetelina IANTCHEVA

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.