OPPOSITION No B 2 748 898

Vim Solution GmbH, Im Eck 5, 79199 Kirchzarten, Germany (opponent), represented by Unverzagt Von Have Rechtsanwälte Partnerschaftsgesellschaft mbB, Heimhuder Straße 71, 20148 Hamburg, Germany (professional representative)

a g a i n s t

ShenZhen VIMVIP Technology Co. Ltd., Room C22, 3rd Floor, Hedian Building, Shennan Rd, Yuan Ling Street, Futian Qu, Shenzhen City, Guangdong Province, Republic of China (applicant), represented by Isern Patentes Y Marcas S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).

On 16/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 748 898 is partially upheld, namely for the following contested goods:

Class 9:        Couplers [data processing equipment]; interfaces for computers; USB flash drives; computer hardware; tablet computers; smartwatches; smartphones; wearable activity trackers.

2.        European Union trade mark application No 15 244 353 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 some of the goods of European Union trade mark application No 15 244 353, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 7 253 263. 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:        Digital storage media, namely USB storage media.

Class 35:        Retail services (including online) in relation to office requisites, electronic goods, gaming, sporting and leisure articles, leather articles, lights, umbrellas/parasols, key rings, writing implements, confectionery, bags, textiles, clocks and watches, home accessories, foodstuffs, USB storage media, MP3 players, MP4 players; advertising; product marketing services; arranging of advertising space, in particular on Internet pages; organising business contacts; arranging of commercial transactions via computer networks, in particular via the Internet; updating and maintenance of data in computer databases; computerised file managing; storage of data in computer databases.

Class 42:        Server administration; rental of webservers; technological services in relation to the implementation of domain name registration; designing and developing web pages on the Internet; rental of computers and computer software; installing webpages on the Internet, for others.

The contested goods are the following:

Class 9:        Couplers [data processing equipment]; interfaces for computers; USB flash drives; computer hardware; tablet computers; smartwatches; protective films adapted for computer screens; smartphones; wearable activity trackers; branch boxes [electricity]; covers for smartphones.

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’, 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).

However, the term ‘namely’, used in the opponent’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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 9

The contested USB flash drives are included in the broader category of the opponent’s digital storage media, namely USB storage media in Class 9. Therefore, they are identical.

The contested computer hardware; couplers [data processing equipment]; interfaces for computers belong to the collection of physical components that constitute a computer system (i.e. computer hardware). They are related to the opponent’s digital storage media, namely USB storage media in Class 9 (which is a data storage device used, inter alia, for transfer of computer files and storage), since they can coincide in end consumers and distribution channels. Furthermore, they are complementary. Therefore, they are similar.

The contested tablet computers; smartwatches; smartphones; wearable activity trackers belong to a homogeneous group of small portable computers that, inter alia, enable their users to access the internet, store information and execute programs and applications. They are connected to the opponent’s digital storage media, namely USB storage media in Class 9, since they can coincide in end consumers and distribution channels.

The contested covers for smartphones; protective films adapted for computer screens have the intended purpose of covering, and thus protecting, an item that is specified by the type of case. These goods are rudimentary and do not possess any internal or self-governing technology. In contrast, the opponent’s goods in Class 9 are electronic storage devices that allow connection through a USB port to a computer to transfer or store data. The conflicting goods do not have anything in common, as they differ in their natures, purposes, distribution channels, producers and methods of use. In contrast, the opponent’s services in Classes 35 and 42 are essentially promotional, commercial trading and business management services on the one hand, and IT services in relation to computers, software and web pages on the other. The contested goods in Class 9 found to be dissimilar also differ from these services in their nature, purpose, distribution channels and producers/providers. They are neither complementary nor in competition. Therefore, they are dissimilar to the opponent’s goods and services in Classes 9, 35 and 42.

The contested branch boxes [electricity] are goods made of different materials used for ducting, isolating, cabling and laying cables and pipes in electrical and electronic installations. The opponent’s digital storage media, namely USB storage media in Class 9 are devices for storage and transmission of media and data. The conflicting goods are manufactured and supplied by different undertakings. Their natures and intended purposes are different, they are not in competition with each other or complementary, and they have different distribution channels. Furthermore, these contested goods do not have anything in common with the opponent’s services in Classes 35 and 42, since they are not in competition or complementary and also differ in their natures, purposes, distribution channels and producers/providers. Therefore, they are dissimilar to the opponent’s goods and services in Classes 9, 35 and 42.

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 at the public at large and at professional public with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, depending on the price and the level of technological sophistication of at least some of the goods, such as smartphones and tablet computers.

3. The signs

Vim
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.

In this regard, the coinciding element ‘VIM’ has no meaning in certain territories, for example in those countries where English is not understood. This is the case, for instance, for the Spanish-speaking part of the general public. It must be taken into account that, although the contested sign is composed of the word ‘VIMVIP’, it can be held that a significant part of this public is likely to dissect the sign into different components. This is justified by the fact that only the element ‘VIP’ has a clear meaning and therefore a significant part of the public will break it down into two parts, ‘VIM’ and ‘VIP’. In view of this premise, the Opposition Division will proceed with the evaluation of the decision in relation to these consumers.

The earlier mark is the word mark ‘Vim’. Word marks are protected as such and not for their written form (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in upper, lower or title case letters. The contested sign is a figurative mark composed of the word ‘VIMVIP’ in a standard black typeface.

As stated above, the element ‘VIM’ contained in the earlier and contested signs has no meaning for the relevant public and is, therefore, distinctive. In contrast, the word ‘VIP’ in Spanish means ‘person that receives special treatment in some public places for being famous or socially relevant’ (information extracted from Real Academia Española Dictionary online on 06/06/2017 at http://dle.rae.es/?id=brxxDGE). This expression is commonly used as a generic indication of the ‘superior category’ of the marketed products or services. Therefore, this element is laudatory for these goods, as it conveys the idea that the goods concerned are exclusive and indirectly suggests a sort of good quality. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the signs at issue.

The signs display no element that can be considered visually dominant.

Visually and aurally, the signs are similar to the extent that they coincide in the letters and sound of the distinctive element ‘VIM’, which forms the entirety of the earlier mark and the first three letters of the contested sign. However, they differ in the additional letters ‘VIP’ of the contested sign, which are, as explained before, considered a weak element.

Furthermore, the fact that the signs coincide in the first part of the contested sign has more influence, as generally the first part is the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Therefore, the signs are visually and aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘VIP’ of the contested sign, 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.

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 and services 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

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 (recital 8 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 contested goods and the opponent’s goods and services are partly identical, partly similar and partly dissimilar. They target both the public at large and professionals, and the degree of attention may vary from average to higher than average for the reasons given above in section b) of the present decision. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually and aurally similar to a high degree because the earlier mark, ‘VIM’, is included in its entirety as the first element of the contested sign, ‘VIMVIP’. The fact that the similarity lies in the first part of the contested sign is relevant, as consumers generally tend to focus on the first element of a sign when they encounter a trade mark. This is because 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.

In addition, the element ‘VIM’ in the contested sign is also the most distinctive element in this sign. The additional element ‘VIP’ contained in the contested sign will be associated with exclusivity or special treatment. In combination with the distinctive word ‘VIM’, ‘VIP’ could be understood as a separate, more exclusive product line or service. Therefore, the differences between the signs are confined to secondary or weakly distinctive elements and aspects.

In the light of the foregoing, it should be stressed that 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/services covered are from the same or economically linked undertakings. 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-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 sign must be rejected for the goods found to be identical or 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

Andrea VALISA

Birgit Holst FILTENBORG

Michele M. BENEDETTI-ALOISI

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.