OPPOSITION No B 2 727 819

Sennheiser electronic GmbH & Co. KG, Am Labor 1, 30900 Wedemark, 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

Onkyo Kabushiki Kaisha d/b/a Onkyo Corporation, 2-1 Nisshin-cho Neyagawa-shi, Osaka 572-8540, Japan (holder), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).

On 19/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 727 819 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 266 854, namely some of the goods in Class 9. The opposition is based on German trade mark registration No 302 013 059 412. 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: Apparatus for recording of sounds or images; apparatus for transmission of sound or images; apparatus for reproduction of sound or images; magnetic data carriers; recording discs; compact discs; DVDs; other digital data carriers; computer; computer software; application software [apps].

The contested goods are the following:

Class 9: Loudspeakers; megaphones; audio speakers; cabinets for loudspeakers; speaker mounting brackets; speaker mounting stands; headphones; earphones; horns for loudspeakers; speaker systems; microphone; audio and video signal processing apparatus.

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 loudspeakers; megaphones; audio speakers; headphones; earphones; speaker systems; microphone are all included in the opponent’s broad category of apparatus for transmission of sound. These goods are therefore identical.

The contested audio and video signal processing apparatus is synonymous with apparatus for reproduction of sound and images and these goods are therefore also identical.

The contested cabinets for loudspeakers; speaker mounting brackets; speaker mounting stands; horns for loudspeakers are complementary fittings for apparatus for transmission of sound. These goods are produced by the same companies and target the same public. Therefore, they are similar.

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 (e.g. in the case of cabinets for loudspeakers) at business customers with specific professional knowledge or expertise. The degree of attention varies from average to high depending on the degree of specialisation of the goods in question.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is a figurative mark consisting of a thick white letter ‘e’ placed on the right side within a black circle. Considering the nature of the goods in Class 9, the letter ‘e’ will be perceived by the relevant public as a reference to something electronic (by analogy or association with expressions such as e-mail, e­banking and e-commerce), and therefore this element is considered to be weak.

The contested sign also consists of a white letter ‘e’ on a black circle, as well as the elements ‘-onkyo’ and ‘music’ in thick black letters. The letter ‘e’ – which, unlike in the earlier mark, is placed in the centre of the black circle – is, as stated above, descriptive in relation to the relevant goods, even in combination with the element ‘-onkyo’. The element ‘-onkyo’ has no meaning in relation to the goods at issue and is therefore distinctive. However, the word ‘music’, is also considered non-distinctive in relation to goods that transmit sound.

Therefore, in both signs, the letter ‘e’ will hardly be attributed any trade mark significance in the context of the relevant goods. Consequently – contrary to the opponent’s arguments – when encountering the signs at issue, the public will pay more attention to the elements that are capable of indicating commercial origin. In the contested sign, the public will focus on the distinctive element ‘-onkyo’.

The device of a circle in each mark is considered – contrary to the opponent’s argument that it is a special stylisation of the earlier mark – non-distinctive, as a circle is a banal feature often used as a background, to which hardly any distinctive character can be attributed.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

Visually, the signs coincide in a white letter ‘e’ on a black circle. However, they differ in the other elements of the contested sign, ‘-onkyo’ and ‘music’, which have no counterparts in the earlier mark. Moreover, the letter ‘e’ in the earlier mark is on the right side of the black circle, whereas the letter ‘e’ in the contested sign is in the centre of the black circle.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the letter ‘e’. However, it differs in the other elements of the contested sign that will be pronounced, namely ‘-onkyo’ and ‘music’. Given that the elements ‘e-’ and ‘music’ in the contested sign are weak, it is highly likely that the relevant public will pay less attention to them and therefore refer to the mark as ‘onkyo’.

Therefore, the signs are aurally similar to a low degree.

Conceptually, the signs overlap in only the weak element ‘e’, whereas the differing elements convey either different concepts or no concept. Therefore, the overlap has no impact.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

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).

As indicated above, the contested goods are identical or similar to the opponent’s goods and they target the public at large and professionals; the public has a degree of attention that varies from average to high.

The signs coincide to the extent that they contain the letter ‘e’ on a black circle, the distinctiveness of which must be seen as weak in relation to the goods and which therefore does not play an independent distinctive role in the contested sign as claimed by the opponent. Even though the other differing element, ‘music’, is also weak, it should be borne in mind that the differing element ‘-onkyo’ of the contested sign is its most distinctive element, as it has an average degree of distinctiveness.

According to settled case-law, if trade marks have identical parts that are weak, the existing differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, ALL-DAY AQUA / Krüger All Days, § 50; 14/05/2001, R 0257/2000-4, e plus / PLUS, § 22). Such differences reduce the likelihood of confusion between conflicting trade marks. This clearly applies to the present case, in which, because of a differentiating distinctive component, the conflicting signs can be safely distinguished by the relevant consumer with an average degree of attention.

Although a company is certainly free to choose a trade mark with a low degree of distinctiveness, and use it on the market, it must accept, however, in so doing, that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011-5, 4REFUEL (fig.) / REFUEL, § 15; 18/09/2013, R 1462/2012-G, ULTIMATE GREENS / ULTIMATE NUTRITION (fig.) et al., § 59).

Considering all the above, there is no likelihood of confusion on the part of the public, as it can be safely concluded that the relevant public will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or economically linked undertakings.

Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ioana MOISESCU

Cynthia DEN DEKKER

Plamen IVANOV

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.