OPPOSITION No B 2 769 985

EMTrust GmbH, Gewerbering 1, 85258 Weichs, Germany (opponent), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative)

a g a i n s t

Anronx (Beijing) Co. Ltd, Room 307, No. JIA23 Xingshikou, Haidian District, Beijing, Republic of China (applicant), represented by Elzaburu S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 769 985 is upheld for all the contested goods.

2.        European Union trade mark application No 15 579 923 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 579 923, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 11 215 084. 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 and services

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

Class 9:        Electric and electronic apparatus, equipment and instruments (included in class 9), and electric and electronic assemblies and components therefor, namely weighing, measuring, testing, checking, research, control, regulating, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for electrical engineering, namely for conducting, converting, storage, regulating and controlling; Apparatus and instruments for communications engineering, namely for communications, high frequency and control engineering; Cash registers, calculating machines, mechanisms for coin-operated apparatus, computers, data processing equipment, data-recording, data-input, data-output, data-transmission and data-storage apparatus, and input screens, monitors, graphics cards, file cards, interface cards, interface apparatus, hard disks, mass storage units, keyboards, mice, touch pads, optical readers, barcode readers, text readers, scanners, printers, writers, plotters, hard-disk, tape and floppy disk drives, network devices, modems and other computer peripheral devices, telecommunications apparatus, apparatus for recording, transmission or reproduction of sound or images, scientific apparatus and instruments, nautical apparatus and instruments, surveying apparatus and instruments, photographic apparatus and instruments, optical apparatus and instruments, cinematographic apparatus and instruments, and electric and electronic assemblies and components for the aforesaid goods; Electric and electronic modules, printed and non-printed circuit boards, circuit boards, distributing switchboards and boxes, electric cables, electric switches, electric and electronic circuits, printed circuits, printed discs; Machine-readable data carriers of all types with and without programs, computer software.

Class 37:        Installation, assembly, servicing, maintenance and repair of electric and electronic apparatus, equipment and instruments and of electric and electronic assemblies and components.

Class 40:        Printing of circuit boards; Custom manufacture of motherboards.

Class 42:        Planning, technical project studies, development, testing and quality checking of electric and electronic assemblies and components, and of electric and electronic apparatus, equipment and instruments; Creation of programs for data processing; Programming services; Engineering; Surveying.

The contested goods are the following:

Class 9:        Data processing apparatus; Computer programs [downloadable software]; Electronic publications, downloadable; Transmitters of electronic signals; Intercommunication apparatus; Modems; Network communication device; Meteorological instruments; Measuring instruments; Gas testing instruments.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods 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 data processing apparatus is a synonym of data processing equipment covered by the earlier mark. Therefore, the goods are identical.

Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs to operate.

Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation.

The applicant’s computer programs [downloadable software] are similar to the opponent’s computers as these goods may coincide in producer, end user and distribution channels. Furthermore they are complementary.

The electronic publications, downloadable covered by the contested sign are similar to the opponent’s computer software as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested transmitters of electronic signals; intercommunication apparatus; modems and network communication device are included in the broad category of the opponent’s telecommunication apparatus. Therefore, they are identical.

The meteorological instruments contained in the contested sign overlap with the opponent’s nautical apparatus and instruments as the latter cover a wide range of sailing equipment or one relating to ships, navigation and weather forecasting. Therefore, these goods are identical.

The applicant’s measuring instruments are identically contained in the opponent’s electric and electronic apparatus, equipment and instruments (included in class 9), and electric and electronic assemblies and components therefor, namely weighing, measuring, testing, checking, research, control, regulating, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for electrical engineering, namely for conducting, converting, storage, regulating and controlling. Therefore, they are identical.

The contested gas testing instruments are included in the broad category of the opponent’s electric and electronic apparatus, equipment and instruments (included in class 9), and electric and electronic assemblies and components therefor, namely weighing, measuring, testing, checking, research, control, regulating, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for electrical engineering, namely for conducting, converting, storage, regulating and controlling. 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 or similar are directed both at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods.

3. The signs

ANDROX
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.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, as the pronunciation of the marks is very similar for that part of the relevant public, as will be explained in more detail below.

The earlier sign is a word mark composed of the word ‘ANDROX’ which will not be associated with any meaning by the relevant public and therefore is considered distinctive.

The contested sign is a figurative mark which contains the text ‘AnronX’ in the upper row. Although the first letter of the upper row of the contested sign is stylised to the extent that the horizontal bar is missing, it will be perceived by the public as a letter ‘A’. The text in the lower row of the contested sign will be perceived as a text in non-Latin alphabet and will not be associated with any meaning by the majority of the relevant public. The word element ‘AnronX’ will not be attributed any meaning. Therefore, all the elements of the marks are distinctive. The text ‘AnronX’, presented in stylised bold red typeface is the dominant element of the mark, visually outstanding over the black text in a non-Latin alphabet presented in a smaller typeface.

Visually, the signs coincide in the letters ‘AN*RO*X’ of the words ‘ANDROX’ in the earlier mark and ‘AnronX’ of the contested sign. However, they differ in the third letter ‘D’ of the earlier mark and the fifth letter ‘N’ of the contested sign. Furthermore, the marks differ in the additional element in the contested sign consisting of a text in a non-Latin alphabet. Other differentiating elements involve the red colour and the stylisation applied to the letters of the dominant element of the contested sign, which are not present in the earlier mark.

It should be noted that 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Moreover, account should be taken of the fact that the conflicting signs share the first two letters ‘AN’. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

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

Aurally, both signs will be pronounced in two syllables commencing with ‘AN’ and ending with ‘X’, namely ‘AN-DROX’ and ‘AN-RONX’. Given the unusual juxtaposition of the phonemes ‘N’ and ‘X’ in the contested sign, a part of the relevant public might refer to the contested sign as ‘ANRON X’, whereas another part of the relevant public will tend to omit the sound ‘N’ and pronounce the word as ‘AN-ROX’. The text in a non-Latin alphabet will not be referred to aurally.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. The text in a non-Latin alphabet included in the contested sign will not be associated with any meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence 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.

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.

5. Global assessment, other arguments and conclusion

As follows from the analysis in section a) above, the goods have been found similar or identical.

There is an average degree of visual and aural similarity, while a conceptual comparison of the signs is not possible.

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 differences between the signs are confined to the letter ‘D’ in the earlier mark and the letter ‘N’ in the contested sign, the colour and stylised typeface applied in the contested sign and the text in non-Latin alphabet, which will not be attributed any meaning. As a result, what the relevant public will keep in mind are the common letters ‘AN*RO*X’ of the words ‘ANDROX’ in the earlier mark and ‘AnronX’ of the contested sign.

Account is taken of the fact that average consumers, even those who pay a high degree of attention, 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 and 21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 11 215 084. 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.

It follows that the contested trade mark must be rejected for all the contested goods.

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

Marzena MACIAK

Anna MAKOWSKA

Swetlana BRAUN

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.