OPPOSITION No B 2 432 311

Euro Kartensysteme GmbH, Solmsstr. 6, 60486 Frankfurt am Main, Germany (opponent), represented by Michalski Hüttermann & Partner Patentanwälte mbB, Speditionstraße 21, 40221 Düsseldorf, Germany (professional representative)

a g a i n s t

Lenovo (Singapore) Pte. Ltd., 151 Lorong Chuan, 02-01 New Tech Park, Singapore 556741, Singapore (applicant), represented by Cabinet @Mark, 16, rue Milton, 75009, Paris, France (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 432 311 is partially upheld, namely for the following contested goods:

Class 09:        Cell phone speakers; cell phone projectors; cell phone flash lights; cell phone photo printers; cell phone gaming pads; cell phone cameras; cell phone camera flashes.

2.        European Union trade mark application No 13 063 681 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 13 063 681. The opposition is based on European Union trade mark registration No 9 662 321. 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 09:        Magnetic data carriers, in particular credit cards; Automated teller machines; Data carriers, in particular cards with integrated circuits (smart cards), encoded credit cards, encoded debit cards, encoded payment cards, encoded prepaid cards, encoded signature cards, encoded identification cards, encoded service cards, in particular with payment functions and electronic ticketing; Electric and electronic apparatus for processing payment transactions, in particular by means of credit cards, debit cards, payment cards, prepaid cards, signature cards, encoded identity cards, encoded service cards.

Class 36:        Insurance; financial affairs, in particular in connection with credit cards; computer-aided handling of cashless payment transactions between retail companies, service enterprises, including hotels, restaurants, service stations, workshops, transport companies, and the banks holding the accounts of these companies and their customers and the banks holding their accounts; handling of cashless payment transactions, in particular using readers for encoded chip cards; financial services for conducting payment transactions using readers for encoded chip cards and credit cards, debit cards, payment cards, prepaid cards, signature cards, encoded identity cards, encoded service cards; handling of cashless payment transactions using data carriers, in particular credit cards, debit cards, payment cards, prepaid cards, signature cards, encoded identity cards, encoded service cards, for bonus and reward transactions (included in class 36); financial services, in particular consultancy in connection with the management of accounts and the handling of monetary affairs and cashless payment transactions with payment cards, credit cards, debit cards; homebanking; on-line banking services; monetary affairs, in particular in connection with credit cards; real estate affairs.

The contested goods are the following:

Class 09:        Cell phone speakers; cell phone chargers; cell phone covers; cell phone holders; cell phone batteries; cell phone screen protectors; cell phone projectors; cell phone flash lights; cell phone photo printers; cell phone gaming pads; cell phone cameras; cell phone camera flashes; cell phone cords; cell phone wires.

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 ‘in particular’ and ‘including’, used in the opponent’s list of services, indicates that the specific services 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).

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.

As a preliminary remark, the Opposition Division notes that a data carrier is defined as ‘any medium, such as magnetic tape, on which data can be recorded’ (Collins English Dictionary at www.collinsdictionary.com on 05/06/2017).

The contested cell phone speakers; cell phone projectors; cell phone flash lights; cell phone photo printers; cell phone gaming pads; cell phone cameras; cell phone camera flashes are cell phone accessories or applications that interact with data from or through the phone. In order to perform their task the transmission of data occurs. Therefore they are similar to the opponent’s data carriers. These goods may be distributed through the same distribution channels and may target the same end consumer. They may have some degree of complementarity and may also be manufactured by the same producers.

The contested cell phone chargers; cell phone batteries are dissimilar to the opponent’s data carriers. The nature of the goods is different. Their purpose of the contested goods is to transmit energy to cell phones which does not involve the transmission of data. The purpose of a data carrier, on the other hand, is to store data. The method of use of these goods also differs. They are neither complementary nor are they in competition.  These contested goods are also dissimilar to all the other goods in Class 9 and services in Class 36 of the opponent. The nature, purpose and method of use differ. They are neither in competition nor are they complementary. In addition they do not normally coincide in distribution channels or relevant public.

The contested cell phone covers; cell phone holders; cell phone screen protectors; cell phone cords; cell phone wires are accessories for cell phones with different purposes such as protection and ease of use. These goods are not involved in any way in the recording of data.  The nature and purpose of these goods when compared to data carriers are different as is the method of use. They are neither complementary nor are they in competition. Therefore they are dissimilar.
These contested goods are also dissimilar to all the rest of the opponent’s goods and services. The nature, purpose and method of use differ. They are neither in competition nor are they complementary. In addition they do not normally coincide in distribution channels or relevant public.

The opponent claims that the good electric and electronic apparatus for processing payment transactions is identical to cell phones. The Opposition Division points out that the applicant’s list of goods does not include cell phones as such.

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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention varies from average to high. Data carriers such as encoded identification cards will be directed mainly at businesses and the level of attention at least for these goods will tend to be high given the possible security implications and the importance that such goods function correctly.

However, given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

X-TENSION	XTENSION
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 common element ‘XTENSION’ is a clear misspelling of the word ‘Extension’ which is meaningful in certain territories, for example, in those countries where English is understood. Consequently, for economy of proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public who will not perceive any meaning in the word ‘XTENSION’, namely the Hungarian, Bulgarian, Latvian and Lithuanian-speaking part of the public.

The earlier mark is the word mark ‘X-TENSION’ which has no meaning for the Hungarian, Bulgarian, Latvian and Lithuanian-speaking part of the public.  Therefore this verbal element is distinctive for the goods in question. The hyphen, a commonly used punctuation mark, is non-distinctive and will not be given any trade mark significance by the relevant public.

Likewise, the contested sign, the word mark ‘XTENSION’, has no meaning for the relevant public and is distinctive for the goods in question.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in all eight letters; ‘X*TENSION’ which is the contested sign in its entirety. They differ only in the hyphen of the earlier trade mark that separates ‘X’ from ‘TENSION’. Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the syllables ‛X-TEN-SION’, present identically in both signs. The only difference between the signs is the hyphen which will not have any effect of the pronunciation. Therefore, the signs are aurally identical.

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 a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). 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).

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).

In the present case the goods have been found to be partly similar and partly dissimilar. The signs are aurally identical and visually highly similar, the conceptual aspect not influencing the degree of similarity between the signs. The only differentiating feature between the marks is the hyphen which is non-distinctive and its impact, if any, on the relevant public will be minimal. Indeed considering the imperfect recollection of the consumer who rarely has the chance to make a direct comparison between the signs, it can only be concluded that a likelihood of confusion exists on the part of the relevant public with an average degree of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Hungarian, Bulgarian, Latvian and Lithuanian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 from the above that the contested trade mark must be rejected for the goods found to be similar 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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Lars HELBERT

Lynn BURTCHAELL

Claudia MARTINI

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.