OPPOSITION No B 2 525 916

Pasifik Bilgisayar Uluslararasi Ticaret Limited Sirketi, Esentepe Mahallesi, Zincirlidere Caddesi, No: 86/ A, Esentepe, Istanbul, Turkey (opponent), represented by Silex Ip, Calle Velázquez 109, 2º D, 28006 Madrid, Spain (professional representative)

a g a i n s t

Incase Designs Corp., 14351 Pipeline Avenue, Chino, California 91710, United States of America (applicant), represented by Arnold Ruess Rechtsanwälte Partnerschaft Mbb, Königsallee 59a, 40215 Düsseldorf, Germany (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 525 916 is upheld for all the contested goods.

2.        European Union trade mark application No 13 841 961 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 841 961. The opposition is based on, inter alia, European Union trade mark registration No 11 843 117. 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 registration No 11 843 117.

1. The goods

The goods on which the opposition is based are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; electrical power supplies; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, prerecorded magnetic data carriers, optical data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; computer hardware, computer peripherals and accessories, computer software and telecommunications apparatus, including modems, to enable connection to databases, computer networks and the Internet, computer cables; fire-extinguishing apparatus; electronic publications recorded on computer media, downloadable electronic publications; electronic or magnetic cards.

The contested goods are the following:

Class 9: Battery chargers for use with telephones; Chargers for batteries; Chargers for electric batteries; Computer cables; Connecting electrical cables; Connection cables; Electric cables and wires; Electric wire and cable; Electrical connectors; Electrical power extension cords; Power cables; Power connectors; Telecommunication cables; USB cables; USB cables for cellphones; Batteries; Battery chargers; Power adapters.

Contested goods in Class 9

The contested battery chargers for use with telephones; chargers for batteries; chargers for electric batteries; batteries; battery chargers; power adapters are included in the broad categories of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; electrical power supplies. Therefore, they are identical.

The contested computer cables; connecting electrical cables; connection cables; electric cables and wires; electric wire and cable; electrical connectors; electrical power extension cords; power cables; power connectors; telecommunication cables; USB cables; USB cables for cellphones are included in the broad category of, or overlap with, the opponent’s computer peripherals and accessories, computer software and telecommunications apparatus, including modems, to enable connection to databases, computer networks and the Internet, computer cables. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The relevant public’s degree of attention for the goods at issue will be average.

3. The signs

	INCASE
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the public most prone to confusion, in this case the Spanish-speaking part of the public.

The earlier mark is a figurative mark composed of the word ‘inca’ in blue, below which, in considerably smaller letters, are the words ‘Always the Best Quality’. The word ‘inca’ will be understood by the relevant public as ‘a member of a South American Indian people living in the central Andes before the Spanish conquest’ (information extracted from Oxford Dictionaries on 02/03/2017 at https://en.oxforddictionaries.com/definition/inca). The expression ‘Always the Best Quality’ is laudatory and will be understood by the majority of the public; the concept of ‘best quality’ is commonly used in publicity slogans in the relevant territory and will be understood by the relevant Spanish-speaking public, as it is a frequently used English expression. The part of the relevant public that understands the meaning of these words will not pay as much attention to these weak elements as to the other, more distinctive, element of the mark, namely ‘INCA’. Consequently, the impact of these elements is limited when assessing the likelihood of confusion between the marks at issue for the majority of the relevant public.

The contested sign is a word mark, ‘INCASE’. This word, as a whole, has no meaning for the relevant public and has no elements that could be considered more distinctive or dominant than other elements.

The element ‘INCA’ in the earlier sign is the dominant element, as it is the most eye-catching. ‘INCA’ is the visually most dominant element of the earlier mark because it is considerably larger than the other verbal component and, in addition, it is much easier to remember and pronounce than the expression ‘Always the Best Quality’.

Visually, the signs coincide in the letters ‘inca’, which form the most distinctive and dominant element in the earlier mark and the first four letters of the six-letter word in the contested sign. However, they differ in the laudatory expression ‘Always the Best Quality’ in the earlier mark, and in the different colours and typefaces used in the earlier sign. They also differ in the last two letters, ‘se’, in the contested sign.

The beginnings of the conflicting marks are identical. Consumers generally tend to focus on the beginning 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.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛inca’, present identically in both signs. The pronunciation differs in the sound of the last letters, ‛se’, in the contested mark and in the sound of the letters in the expression ‘Always the Best Quality’ in the earlier mark. This expression, as explained above, due to its size, is not likely to be pronounced.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the relevant public will perceive the dominant element of the earlier sign, ‘inca’, to have the meaning mentioned above. The expression ‘Always the Best Quality’ is a generic way of praising something’s quality and is thus laudatory; it will be understood by the majority of the public, but will not receive as much attention as the other, more distinctive, element of the mark, namely ‘INCA’. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical.

The signs are visually and aurally similar to an average degree. The word ‘inca’ of the earlier sign is entirely contained within the contested sign. In addition, this element is placed at the beginning of both marks, the part of a sign to which consumers usually pay more attention. Consequently, the identical string of letters at the beginning of the marks at issue has to be taken into account when assessing the likelihood of confusion between the marks.

The earlier mark has a weak verbal element, namely a laudatory expression, as explained in section c) above. Therefore, the differences between the signs are confined to weak or secondary elements and aspects of the earlier mark. Consequently, the attention of the relevant public will focus on the distinctive element, ‘inca’, in the earlier mark, which constitutes the first four letters out of a total of six in the contested sign.

The differences between the earlier mark and the contested sign – namely the last two letters, ‘se’, in the contested sign and the weak verbal element in the earlier mark, as well as the fanciful typefaces of the earlier sign – are not sufficient to counteract the significant similarities between them; therefore, there is a serious risk that the relevant public will confuse the signs and believe that they come from the same undertaking or from economically-linked undertakings.

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 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, it is of particular relevance that all the goods at issue are identical.

In its observations, the applicant argues that it owns several registrations with the word ‘INCASE’ in the EUIPO Register, some of which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved. In this case, the applicant has not proven the actual co-existence of the marks on the market.

Therefore, in the absence of convincing arguments and additional evidence thereof, this argument of the applicant must be rejected as unfounded.

In its observations, the applicant argues that earlier trade mark has a low distinctive character given that there are many trade marks that include ‘INCA’. In support of its argument, the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘INCA’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 843 117. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right European Union trade mark registration No 11 843 117 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Dorothee SCHLIEPHAKE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.