OPPOSITION No B 2 319 203

P2I Limited, 127 North, Milton Park, Abingdon Oxfordshire OX14 4SA, United Kingdom (opponent), represented by Sipara Limited, Seacourt Tower, Third Floor, West Way, Oxford  OX2 0JJ, United Kingdom (professional representative)

a g a i n s t

Laurent Dahan, 123 rue Breteuil, 13006 Marseille, France (applicant), represented by Markplus International, 39 rue Fessart, 92100 Boulogne-Billancourt, France (professional representative).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 319 203 is upheld for all the contested goods.

2.        European Union trade mark application No 12 175 766 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 175 766. The opposition is based on international trade mark registration No 1 187 473. The opponent invoked Articles 8(1)(b) and 8(5) 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, inter alia, the following:

Class 9:         Scientific, electric, optical, weighing, measuring, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; tablet computers; portable electronic devices; printed circuit boards; headphones; mobile phones; carriers adapted for mobile phones; cases adapted for mobile phones; holders adapted for mobile phones; MP3 players; cases for MP3 players; pipettes, pipette tips; petri dishes; microtitre plates; ski goggles; sunglasses.

The contested goods are the following:

Class 9:        Telephones, mobile telephones, parts of mobile telephones, accessories for mobile telephones, namely headphones, earphones, hands-free microphones, hands-free kits, protective covers, cases and housings for portable telephones, portable telephone chargers, batteries for portable telephones, bases and receptive furniture specially designed to house portable telephones; hand-held computers, digital tablets; supports specifically designed for holding portable telephones, digital tablets and hand-held computers; accessories for digital tablets and hand-held computers, namely earphones, headphones, earphone earbuds, hands-free microphones, hands-free kits, protective covers, cases and shells for digital tablets and hand-held computers, chargers for digital tablets and hand-held computers, batteries for digital tablets and hand-held computers; stands and other devices specifically designed for holding digital tablets and hand-held computers; bags and protective equipment adapted for laptops, digital tablets and portable telephones.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant 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.

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 telephones, mobile telephones, digital tablets; accessories for mobile telephones, namely headphones, cases and housings for portable telephones; accessories for digital tablets and hand-held computers, namely headphones; supports specifically designed for holding portable telephones are identically contained in the opponent’s list of goods (including synonyms) albeit, sometimes, with a slightly different wording.

The contested parts of mobile telephones include, as a broader category, the opponent’s batteries for portable telephones. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested accessories for mobile telephones, namely protective covers; bags and protective equipment adapted for portable telephones include as a broader category, the opponent’s carriers adapted for mobile phones. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested accessories for mobile telephones, namely bases and receptive furniture specially designed to house portable telephones are included in the broad category or overlap with, the opponent’s holders adapted for mobile phones. Therefore, they are identical.

The contested hand-held computers are included in the broad category or overlap with the opponent’s computers. Therefore, they are identical.

The contested accessories for mobile telephones, namely earphones, hands-free microphones, hands-free kits, portable telephone chargers, batteries for portable telephones are similar to the opponent’s mobile phones. Since all the goods are mobile phone accessories, they have the same purpose. They can also have the same distribution channels and producers. Furthermore, target the same consumers and are complementary.

The contested supports specifically designed for holding digital tablets and hand-held computers; stands and other devices specifically designed for holding digital tablets and hand-held computers and the opponent’s holders adapted for mobile phones have the same purpose, to hold these devices. Furthermore, they can also have the same distribution channels, producers and target the same consumers. Therefore, they are similar.

The contested accessories for digital tablets and hand-held computers, namely earphones, earphone earbuds, hands-free microphones, hands-free kits, chargers for digital tablets and hand-held computers, batteries for digital tablets and hand-held computers and the opponent’s computers and tablet computers could have the same commercial origin. In addition, they can be used together with the opponent’s goods. Furthermore, the targeted the target the same consumers. The goods in question also have the same distribution channels, as they are sold alongside or close to each other in the same retail outlets. It follows from the above that the goods under comparison are similar.

The contested accessories for digital tablets and hand-held computers, namely protective covers, cases and shells for digital tablets and hand-held computers; bags and protective equipment adapted for laptops, digital tablets and the opponent’s carriers adapted for mobile phones are all devices accessories with the same purpose, to protect them. They can also have the same distribution channels, producers and target the same consumers. 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 to various degrees are directed at the public at large and at business customers 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

DUNKABLE	DUNK
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.

The common element ‘DUNK’ is not meaningful in certain territories, for example, in Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

Visually and aurally, the signs coincide in their first four letters ‘D-U-N-K’. However, they differ in the last four letters of the earlier mark ‘A-B-L-E’.

The contested sign is completely included in the first part of the earlier mark, which is where consumers generally tend to focus their attention 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.

Therefore, the signs are visually and aurally similar to an average 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 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.

5. Global assessment, other arguments and conclusion

As concluded above, the contested goods are identical or similar to varying degrees to the goods of the earlier mark. The degree of attention of the relevant public may vary from average to high and the degree of distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree as the contested sign is contained entirely at the beginning of the earlier mark, where consumers generally tend to focus on when they encounter a trade mark. The contested sign contains the extra letters ‘-ABLE’ at the end. Nevertheless, these four letters are not sufficient to detract from the clear visual and aural similarities conveyed by the coinciding part ‘DUNK’.

Furthermore, 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 187 473 designating the European Union. 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.

Consequently, as the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Pierluigi M. VILLANI

María Clara  IBÁÑEZ FIORILLO

Janja FELC

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.