OPPOSITION No B 2 689 340

Le Shi Internet Information & Technology (Beijing) Corporation, Room 6184, 6th Floor, Building 19, No. 68 Xueyuan South Road, Haidian District, Beijing, People’s Republic of China (opponent), represented by Zivko Mijatovic & Partners, Avenida Fotógrafo Francisco Cano 91A, 03540 Alicante, Spain (professional representative)

a g a i n s t

Jingming Zhang, Building 1201, Hua Mu Maliandao, Xicheng District, Beijing, People’s Republic of China (applicant), represented by Wolfgang Hellmich, Lortzingstr. 9/2. Stock, 81241 München, Germany (professional representative).

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

DECISION:

1.        Opposition No B 2 689 340 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 116 072. The opposition is based on, inter alia, European Union trade mark application No 14 515 423. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark application No 14 515 423.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 9: Computer peripheral devices; Pedometers; Electronic notice boards; Smartphones; Measuring apparatus; Speed checking apparatus for vehicles; Speed indicators; Diagnostic apparatus, not for medical purposes; Electricity mains (Materials for -) [wires, cables]; Electric cables, wires, conductors and connection fittings therefor; Electricity conduits; Wire connectors [electricity]; Chips [integrated circuits]; Integrated circuits; Converters, electric; electronic power supplies; high-voltage power supplies; DC input power supplies; AC/DC power supplies; high-frequency switching power supplies; Electric igniting apparatus for igniting at a distance; Protective helmets; Theft prevention installations, electric; Locks, electric; Chargers for electric batteries; Video screens; Remote control apparatus; Eyeglasses; Spectacles [eyeglasses and goggles]; Goggles for sports; Self-timers [for cameras]; Selfie stick; Cameras [photography]; 3D spectacles; Low-voltage power supply; Headphones; Earphones; Television apparatus; Cabinets for loudspeakers; Computer operating programs, recorded; Downloadable computer application software; Mobile phone cases; Modems; Network routers; Set-top boxes; Tablet computer; Mouse pads; Smart cards [integrated circuit cards]; Computer game programs; Encoded key cards; Navigation apparatus for vehicles [on-board computers]; Television cameras; Camcorders; Portable media players; Projection apparatus; Plugs, sockets and other contacts [electric connections]; USB flash drives; Batteries, electric; Cinematographic film, exposed; Mobile phone straps; Reconfigurable processors for use in wireless communication handsets and network equipment in the field of wideband communications; Telecommunications and data networking hardware, namely, devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications protocols; Computers; Satellite navigational apparatus; Electronic publications, downloadable; Diaphragms [acoustics]; Acoustic couplers; Downloadable image files; Webcams; Mobile phone cases featuring rechargeable batteries; Rechargeable electric batteries; Carrying cases, holders, protective cases and stands featuring power supply connectors, adaptors, speakers and battery charging devices, specially adapted for use with handheld digital electronic devices, namely, {cell phones, MP3 players, personal digital assistants, tablet computers} [excluding gaming apparatus]; Computer memory devices; Transmitting sets [telecommunication]; Mini projector; Cell phone straps of precious metal.

The contested goods are the following:

Class 9: Cameras [photography]; stands for photographic apparatus; viewfinders, photographic; tripods for cameras; flashlights [photography]; transparency projection apparatus; objectives [lenses] [optics]; enlarging apparatus [photography]; shutters [photography]; cases especially made for photographic apparatus and instruments.

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.

Cameras [photography] are identically contained in both lists of goods.

The contested transparency projection apparatus is included in the broad category of the opponent’s projection apparatus. Therefore, they are identical.

The contested stands for photographic apparatus; viewfinders, photographic; tripods for cameras; flashlights [photography]; objectives [lenses] [optics]; enlarging apparatus [photography]; shutters [photography]; cases especially made for photographic apparatus and instruments are all parts and accessories for photographic apparatus. Therefore, these goods are similar to the opponent’s cameras [photography], as they coincide in their producers, distribution channels and relevant public. Moreover, they are complementary.

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 both the public at large and at a professional public with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

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).

Both marks are figurative marks. The earlier mark consists of the slightly stylised verbal element ‘letv’, which will not be artificially dissected and will be perceived, as a whole, as meaningless by the majority of the relevant public (taking into account that the relevant goods in Class 9 are not televisions or TVs). The stylised verbal element ‘LETO’ of the contested sign will also be perceived as a meaningless fanciful term. Consequently, the verbal elements of both marks have a normal degree of distinctiveness.

Visually, the signs coincide in the string of letters ‘LET*’. However, they differ in their stylisation, particularly the highly stylised letter ‘T’ in the contested sign, and in their final letters, ‘v’ in the earlier mark and ‘o’ in the contested sign.

While it is true, as argued by the opponent, that in general the initial part of word marks may be liable to attract the consumer’s attention more than the following parts, this cannot be applied to the present case, as the marks are rather short, each consisting of only four letters, and so they will be perceived as a whole in one glance.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘LET’. The pronunciation differs in the sound of their final letters, ‘v’ in the earlier mark and ‘o’ in the contested sign, which, being a consonant and a vowel, respectively, significantly influence the overall aural perception of the marks.

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

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.

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.

According to the opponent, the earlier trade mark enjoys an enhanced degree of distinctiveness in the European Union. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted a link to Wikipedia and a link to a web page of the China Cultural Industry Association.

Having examined the abovementioned links, the Opposition Division concludes that the links submitted by the opponent do not demonstrate that the earlier trade mark acquired an enhanced degree of distinctiveness through its use.

First, as far as the link to Wikipedia is concerned, it can be noted that Wikipedia is a collective online encyclopaedia whose content can be amended at any time and, in certain cases, by any person, even anonymously; therefore, this information lacks reliability. Furthermore, concerning the second link to a web page of the China Cultural Industry Association, it is not clear to what extent this information relates to the European Union. Moreover, it is not related to the relevant goods in Class 9.

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

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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical and partly similar. The degree of attention will vary from average to higher than average.

The earlier mark has an average degree of distinctiveness.

The marks are visually and aurally similar to a low degree. Furthermore, as the marks do not evoke any particular meaning, the conceptual aspect does not influence the assessment of the signs.

Despite having their first three letters, ‘LET’, in common, the marks are rather short and will be perceived in one glance; therefore, their different endings, ‘V’ versus ‘O’, will immediately be noticed and will significantly influence the overall impressions created by the marks. Furthermore, the signs have different stylisations.

Even taking into account that the relevant public cannot always compare marks side by side and must trust in their imperfect recollection of them, it is considered that the public will be able to distinguish between them. The differences between the marks are clearly perceptible and are unable to be counteracted, considering the abovementioned interdependence principle, by the identity and similarity between the goods.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the opponent referred to the decision of 22/06/2006, B 726 234, but this case is not relevant to the present proceedings. In the case referred to, the marks coincided visually in four out of six letters and aurally in five out of six letters, which is clearly different from the findings in the present case, in which the marks are significantly shorter.

Furthermore, the remaining cases referred to by the opponent (03/07/2003, T-129/01, Budmen, EU:T:2003:184; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102; 04/05/2005, T-22/04, Westlife, EU:T:2005:160; 25/05/2005, T-288/03, Teletech Global Ventures, EU:T:2005:177; 14/12/2005, T-169/04, Carpovirusine, EU:T:2005:459; 30/11/2006, T-43/05, Brothers by Camper, EU:T:2006:370) are also not relevant. In the cases referred to, the coinciding elements could easily be dissected from the marks, as they played individual and independent roles within the marks or because of their meaning or the meaning of the remaining elements of the marks, which is not so in the present case.

Finally, it remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘LE’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

One of these conditions is that the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘LE’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The evidence submitted, which is outlined in section d) of this decision, namely a link to Wikipedia and a link to a web page of the China Cultural Industry Association, is clearly not sufficient. Therefore, as the opponent did not satisfy the first condition regarding a family of marks, there is no need to assess the second condition.

Considering all of the above, there is no likelihood of confusion on the part of the public, even for the public displaying only an average degree of attention. Therefore, the opposition must be rejected. As the opposition is rejected, it is irrelevant whether the earlier trade mark application proceeded to registration or not, as the result would be the same even if the mark had proceeded to registration. Therefore, no likelihood of confusion exists.

The opponent has also based its opposition on the following earlier trade marks:

IR No 1 114 296 designating the European Union for the figurative mark  for goods and services in Classes 9, 41 and 42; EUTM registration No 13 113 253 for the figurative mark  for services in Class 42; EUTM registration No 13 113 361 for the figurative mark  for goods and services in Classes 9, 38 and 41; EUTM registration No 13 883 871 for the figurative mark  for goods and services in Classes 9, 12, 35, 38, 41 and 42; and EUTM registration No 14 515 324 for the figurative mark  for goods in Classes 9, 12, 14 and 28.

The other earlier rights invoked by the opponent are identical to the earlier mark that has already been assessed (EUTMs No 13 113 253 and No 13 113 361), are less similar to the contested mark, since they contain further figurative elements, and are visually split into two parts (IR No 1 114 296), or consist of only two letters (EUTMs No 13 883 871 and No 14 515 324). Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 opponent is the losing party, it must bear the costs incurred by the applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta GARCÍA COLLADO

Saida CRABBE

Ric WASLEY

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.