OPPOSITION No B 2 709 676

CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent)

a g a i n s t

Changzhou Skirda Software Co. Ltd, Room 801, Building 5, Times Business Square, Xinbei District, Changzhou City 213022, People’s Republic of China (applicant), represented by Protecmark, Rey Don Jaime, 2-2, 03600 Elda (Alicante), Spain (professional representative).

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

DECISION:

1.        Opposition No B 2 709 676 is partially upheld, namely for the following contested goods:

Class 9:        Computer programs [downloadable software]; Phototelegraphy apparatus; Portable telephones; Camcorders; Slide projectors; Air analysis apparatus.

2.        European Union trade mark application No 15 060 148 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 15 060 148, namely against all the goods in Class 9. The opposition is based on Benelux trade mark registration No 983 050. 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:        Computer hardware; computer software; computer peripherals; electronic data processing equipment; computer networking and data communications equipment; computer components and parts.

The contested goods are the following:

Class 9:        Computer programs [downloadable software]; Indicators (Quantity-); Phototelegraphy apparatus; Portable telephones; Camcorders; Slide projectors; Air analysis apparatus; Speed checking apparatus for vehicles; Protection devices for personal use against accidents; accumulators, electric, for vehicles.

As a preliminary remark, it should be clarified that the comparison of the goods must be based on the wording indicated in the respective lists of goods. Any actual or intended use not stipulated in the list of goods is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the applicant’s argument that the contested goods mainly target manufacturers of devices for the automobile field and, in connection with Class 12, are goods that are, inter alia, included in the applicant’s list of goods, whereas the opponent’s goods (software) target the general public, is irrelevant and must be put aside.

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

Computer software is identically contained in both lists of goods (including synonyms, such as computer programs and downloadable software).

The contested air analysis apparatus overlaps with the opponent’s electronic data processing equipment, insofar as these categories include electronic equipment for processing of data related to air analysis. Therefore, these goods are identical.

Phototelegraphy apparatus refers to point-to-point communication equipment transmitting pictures, print or images by means of radio or telegraphy. Portable telephones are telephone devices in which the handset is portable and communicates with the body of the phone by radio, instead of being attached by a cord. Consequently, the contested phototelegraphy apparatus and portable telephones are included in the broad category of the opponent’s data communications equipment. These goods are identical.

The contested camcorders; slide projectors overlap with the opponent’s computer peripherals. Therefore, they are identical.

The contested indicators (quantity-); speed checking apparatus for vehicles, as a category of sensors and detectors, have the main purpose of measuring, detecting and/or monitoring physical properties or records. In contrast, the opponent’s goods are essentially data processing equipment that originates from the information technology and telecommunications industry. Therefore, they have different purposes and methods of use from all the opponent’s goods. They do not have the same distribution channels and they target different relevant publics. Contrary to the opponent’s argument, the mere fact that nowadays almost all devices function on the basis of some software or hardware is insufficient for a finding of similarity, as software or hardware targets the manufacturers of finished goods; this precludes any complementarity between these goods. Consequently, they are dissimilar.

The applicant’s protection devices for personal use against accidents in Class 9 are items for protection and include goods such as protective clothing, protective headgear, especially helmets, protective footwear, protective masks, protective eye wear, etc. When comparing these with the opponent’s goods, the Opposition Division can establish no connection between them. They have different natures and serve different needs. Furthermore, the methods of use of these goods are very different. They are neither in competition with nor complementary to each other. Therefore, they are dissimilar.

The contested accumulators, electric, for vehicles refer to apparatus and instruments for accumulating and storing electricity for vehicles only. The natures and purposes of these goods and the opponent’s goods differ, as do their producers, consumers and distribution channels. They are neither in competition with nor complementary to each other. Consequently, these goods are also dissimilar.

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 at issue are directed at the public at large. The degree of attention is considered average.

3. The signs

ROBO
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the relevant public, for which the signs are conceptually neutral, for reasons given below.

The contested sign is a figurative sign that consists of the verbal element ‘Robo’, in which the letters ‘R’ and ‘b’ are slightly stylised, and a figurative element that consists of a black rectangle containing a white chevron or highly stylised, upper case letter ‘K’ and a lower case letter ‘m’. The word element ‘ROBO’ has no meaning for the relevant public and is therefore distinctive. The same conclusion applies to the letters ‘K’ and ‘m’ or the chevron and the letter ‘m’. These elements are also distinctive. Although the figurative elements will not go completely unnoticed, they have a more decorative character.

The contested sign has no elements that could be considered clearly more dominant than other elements.

The earlier mark is a word mark, which means that the word as such is protected and not its written form. It consists solely of the distinctive word ‘ROBO’.

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 the verbal element ‘ROBO’. They differ in the figurative element, the stylisation of the letters ‘R’ and ‘b’, the letter ‘m’ and the chevron or highly stylised letter ‘K’, which have no counterparts in the earlier mark. 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).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ROBO’. The pronunciation differs in the sound of the letters ‛m’ and (for those who will recognise it as such) ‘K’ of the contested mark, which have no counterparts in the earlier sign. Therefore, the signs are 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.

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 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

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.

In the present case, the goods are partly identical and partly dissimilar. The signs are visually similar to an average degree and aurally similar to a high degree. The conceptual aspect does not influence the similarity between the signs. The degree of attention of the relevant public is average and the earlier mark has a normal degree of distinctive character.

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). Given the average to high degree of similarity between the marks and the identical goods, there can be no other finding than a likelihood of confusion on the part of the relevant public. The earlier mark is entirely included in the contested sign. Moreover, the word element ‘ROBO’ is the initial part of the contested mark. 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. Consequently, the only differing elements are the figurative element, the stylisation of the letters and the additional two letters in the contested sign, which can also be perceived as a symbol and a letter; these elements are not particularly striking and their impact will be reduced due to their decorative character or final position in the contested sign. Therefore, the differences are not sufficient to avoid a likelihood of confusion among the relevant consumers.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Dutch-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Benelux trade mark registration No 983 050. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of Benelux 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 identical 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

Solveiga BIEZA

Arkadiusz GORNY

Judit NÉMETH

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.