OPPOSITION No B 2 685 843

Intenso GmbH, Gutenbergstraße 2, 49377 Vechta, Germany (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartgmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative)

a g a i n s t

Shen Zhen Memo Design Technology Co., Ltd, 20A101, Taihua Sunny Bay, Baoyuan road, Baoan district, Shenzhen city, Guangdong, People’s Republic of China (applicant), represented by Revomark, 5 Cranwell Grove, Lightwater, Surrey GU18 5YD, United Kingdom (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 685 843 is upheld for all the contested goods, namely:

Class 9:

Set-top boxes; audio-receivers and video-receivers; satellites for scientific purposes; broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications; parts and fittings for the aforesaid goods.

2.        European Union trade mark application No 14 992 747 is rejected for all the contested goods. It may proceed for the remaining 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 14 992 747, namely against all the goods in Class 9. The opposition is based on international trade mark registration No 1 105 148 designating the European Union. 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, nautical, surveying, photographic, cinematographic, optical, weighing, measuring signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; calculating machines, data processing equipment and computers.

The contested goods are the following:

Class 9:

Set-top boxes; audio-receivers and video-receivers; satellites for scientific purposes; broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications; parts and fittings for the aforesaid goods.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 set-top boxes; audio-receivers and video-receivers are included in the broad category of, or overlap with, the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications are included in the broad category of the opponent’s data processing equipment. Therefore, they are identical.

The contested satellites for scientific purposes are included in the broad category of, or overlap with, the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested parts and fittings for the aforesaid goods (namely set-top boxes; audio-receivers and video-receivers; satellites for scientific purposes; broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications) are often produced and/or sold by the same undertaking that manufactures the end product and often target the same purchasing public, as in the case of spare or replacement parts. Moreover, the target public may also expect such parts and fittings to be produced by, or under the control of, the ‘original’ manufacturer. Therefore, the contested parts and fittings for the aforesaid goods (namely set-top boxes; audio-receivers and video-receivers; satellites for scientific purposes; broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications) are similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images; data processing equipment; scientific apparatus and instruments.

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 and services found to be identical are directed at the public at large (e.g. audio-receivers) and also business customers with specific professional knowledge or expertise such as engineers, researchers and telecommunications experts (e.g. satellites for scientific purposes). The degree of attention paid to the goods and services concerned may vary from average to high, depending on the nature and type of the goods concerned and due to the high levels of technicality, specificity or price of some of the goods and the infrequency with which they will be purchased.

3. The signs

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a figurative mark consisting of three verbal elements, namely ‘(Intenso)’, ‘Memory’ and ‘Box’. All are depicted in standard black title case letters. The first verbal element, ‘(Intenso)’, is above the other two verbal elements.

The contested sign is a figurative mark consisting of the single verbal element ‘memobox’. This verbal element is depicted in lower case letters, using a slightly stylised rounded font where the letters ‘obo’ each have a black circle inside them and touch each other.

The compound ‘memobox’, constituting the contested sign, has no meaning for the relevant public and does not exist in common parlance. The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that a part of the relevant public, more specifically where those common elements are meaningful or clearly related to words in the relevant language, will perceive this word as the mere sum of its parts, thus splitting it into the words ‘memo’ and ‘box’. This circumstance is applicable in those countries where, for instance, Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, such as in Spain.

The element ‘(Intenso)’ of the earlier mark will be understood by the relevant public as the Spanish word ‘intenso’, an adjective used to describe something that is very great or extreme in strength or degree. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘Memory’ of the earlier mark will be understood by the relevant public as the Spanish word ‘memoria’, with the meaning of something one remembers from the past, the ability to remember things or the part of a computer where information is stored for a short time before it is transferred to hard disk. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘Box’ of the earlier mark will be understood by the relevant public as the rare Spanish word ‘box’, which has the same meaning as in English. As it is allusive to the shape or physical characteristics of the goods concerned, it will be weak for all the relevant goods.

Considering the relevant goods, the contested sign could be split by a part of the relevant public into the components ‘memo’ and ‘box’, due to its closeness to the Spanish words ‘memoria’ and ‘box’. For this part of the public, following the same reasoning as explained above, ‘memo’ will be distinctive for all the relevant goods and ‘box’ will be weak for most of them, namely set-top boxes; audio-receivers and video-receivers; broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications, while ‘box’ will be distinctive for the rest of the goods.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the elements ‘memo’ and ‘box’, which are conjoined in the contested sign and separated in the earlier mark, in which the coinciding element ‘memo’ is followed by the letters ‘ry’ and a space before the second coinciding element ‘box’. However, they differ in the element ‘(Intenso)’ and in the letters ‘ry’, present in only the earlier mark. The signs also differ in the stylisation of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the syllables ‛me-mo’ and ‘box’, present identically in both signs. The pronunciation differs in the syllables ‘in-ten-so’ and ‘ry’ of the earlier mark, which have no counterparts in the contested sign.

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

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, their elements will be associated with the meanings explained above, and ‘Memory Box’ will convey an analogous concept to ‘memo’ and ‘box’. However, the differing element ‘(Intenso)’ will also introduce the concept of the adjective as explained above, which makes the signs conceptually similar to an average degree.

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the weak element ‘Box’ in the mark as stated above in section c) of this decision.

5. 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 covered are from the same or economically linked undertakings (likelihood of association).

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 the marks may be offset by a greater degree of similarity between the goods and services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical and partly similar.

The present assessment of likelihood of confusion is carried out in relation to the perception of the part of the public in the relevant territory that is more prone to confusion, namely the general public. As set out in section c) of this decision, there are certain differences between the signs. However, those differences are incapable of counteracting the similar overall impressions created by the signs sufficiently to enable the relevant public to safely distinguish between them.

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).

The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The differences between the signs do not counteract the similarities between them that render the signs similar to an average degree visually, aurally and conceptually. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49), or, that when encountering the conflicting signs in the context of identical goods, they may think that they denote goods from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public, even for those goods in relation to which the public will pay more attention. 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 and 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 international trade mark registration No 1 105 148 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Ana MUÑIZ RODRIGUEZ

Fabián GARCIA QUINTO

Zuzanna STOJKOWICZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.