OPPOSITION DIVISION
OPPOSITION No B 2 478 140
Bird Technologies Group, Inc., 30303 Aurora Road, Solon, Ohio 44139, United
States of America (opponent), represented by Bugnion S.P.A., Via A. Gramsci 42,
50132 Firenze, Italy (professional representative)
a g a i n s t
ISB Technology S.a.r.l, 70 Route de Hollerich, 1740 Luxembourg, Luxembourg
(applicant), represented by ISB Technology S.a.r.l, Mark Halstead, 6, Boulevard
Pierre Dupong, 1430 Luxembourg, Luxembourg (employee representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 478 140 is partially upheld, namely for the following
contested goods:
Class 9: Apparatus, instruments and cables for electricity; information
technology and audiovisual equipment; measuring, detecting and
monitoring instruments, indicators and controllers.
2. European Union trade mark application No 13 440 201 is rejected for all the
above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 13 440 201, namely against all the goods
in Class 9. The opposition is based on European Union trade mark registration
No 2 654 028. 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
Decision on Opposition No B 2 478 140 page: 2 of 6
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.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Electric apparatus and instruments (included in class 9); radio
apparatus, namely, electrical meters, electrical coaxial line power attenuators,
electrical filters, and electrical switches.
The contested goods are the following:
Class 9: Apparatus, instruments and cables for electricity; information
technology and audiovisual equipment; magnets, magnetizers and demagnetizers;
measuring, detecting and monitoring instruments, indicators and controllers;
navigation, guidance, tracking, targeting and map making devices; optical devices,
enhancers and correctors; recorded content.
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 opponent’s list of goods to show the relationship of
individual goods 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.
Apparatus, instruments for electricity are identically contained in both lists of goods
(including synonyms).
The contested cables for electricity have the same distribution channels, end users
and producers as the opponent’s electric apparatus and instruments (included in
class 9). In addition, these goods are complementary and are deemed highly similar.
The contested information technology equipment includes goods such as computers
and printers. These goods can be complementary to goods covered by the
opponent’s electric apparatus and instruments (included in class 9) (which are all
kinds of electric devices in Class 9) and they can be traded through the same
channels and target same relevant publics. Therefore, they are deemed similar.
The contested audiovisual equipment includes goods such as laptops, flat screen
monitors and projectors. These goods are similar to the opponent’s electric
apparatus and instruments (included in class 9). These goods can be
complementary, share the same distribution channels and target same relevant
publics.
The contested measuring, detecting and monitoring instruments, indicators and
controllers are similar to a low degree to the opponent’s electric apparatus and
Decision on Opposition No B 2 478 140 page: 3 of 6
instruments (included in class 9) as they can coincide in producer, end user and
distribution channels.
The contested navigation, guidance, tracking, targeting and map making devices are
electronic devices used for navigating and positioning purposes. The fact that these
goods need electricity to function does not render them similar to the opponent’s
electric apparatus and instruments (included in class 9); radio apparatus, namely,
electrical meters, electrical coaxial line power attenuators, electrical filters, and
electrical switches. Furthermore, these products differ in nature, methods of use and
purpose, and they usually do not come from the same undertakings nor are they
traded through the same channels. Therefore, these goods are deemed dissimilar.
The contested magnets, magnetizers and demagnetizers; optical devices, enhancers
and correctors have different natures, purposes and methods of use than the
opponent’s electric apparatus and instruments (included in class 9); radio apparatus,
namely, electrical meters, electrical coaxial line power attenuators, electrical filters,
and electrical switches. Furthermore, they have different consumers and distribution
channels and are neither complementary or in competition. Therefore, the goods are
dissimilar.
The contested recorded content includes goods such as CD’s and DVD’s with
recorded content. These goods have a different nature, method of use and purpose
to the opponent’s electric apparatus and instruments (included in class 9); radio
apparatus, namely, electrical meters, electrical coaxial line power attenuators,
electrical filters, and electrical switches. The contested goods are, furthermore, not
complementary or in competition with the opponent’s goods. Therefore, they are
dissimilar.
b) 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 but also at a more specialised public with professional
knowledge or expertise, for example, electricians and experts within IT. The degree of
attention may vary from average to high.
c) The signs
BIRD Happy Birds
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
Decision on Opposition No B 2 478 140 page: 4 of 6
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.
The signs include the words ‘BIRD’ (the earlier mark) and ‘Happy Birds’ (the
contested sign), which are meaningful in the parts of the relevant territory where
English is understood. Consequently, the Opposition Division finds it appropriate to
focus the comparison of the signs on the English-speaking part of the public, since
for this part the signs have conceptual similarities and are more similar overall.
The earlier mark, ‘BIRD’, will be perceived by the public taken into consideration as ‘a
bird’ (i.e. an animal) or as an English surname, while the contested sign will be
perceived as ‘birds that are happy’. These meanings have no connections or links to
the relevant goods; therefore, both signs are distinctive.
Since both signs are word marks, it is irrelevant whether they are represented in
lower or uppercase.
Visually and aurally, the signs coincide in that ‘BIRD’ will be read and pronounced
in both signs. However, they differ in that ‘Happy’ will be read and pronounced first in
the contested sign. Due to the fact that consumers read from left to right and
generally pay more attention to a sign’s initial element, this difference has an impact
when comparing the signs as a whole, especially, since the earlier mark is relatively
short. Moreover, they differ in that ‘Birds’ of the contested sign contains one
additional letter ‘s’. Nevertheless, this difference occurs at the end of the word and
may, therefore, be more easily overlooked (in particular, visually). Bearing this in
mind, the signs are at most visually and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. The earlier mark will be perceived as a bird and/or
as a surname. However, even when perceived as a surname, the earlier mark is
likely to give associations to the animal ‘bird’, which concept is also found in the
contested sign. The contested sign will be perceived as ‘happy birds’ as a whole, with
‘Happy’ being an adjective describing the noun (i.e. ‘Birds’). Bearing this in mind, and
the fact that ‘birds’ is rendered in plural in the contested sign; it creates some small
conceptual differences between the signs. However, since both signs will be
perceived as conveying (or making reference to) the distinctive concept of the
animal(s) ‘bird(s)’, they are conceptually 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.
d) 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.
Decision on Opposition No B 2 478 140 page: 5 of 6
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation. Nevertheless, it claims the earlier mark to enjoy a
‘medium to high degree of distinctiveness’, but no evidence has been filed to support
such a claim, that is, that the earlier mark has a higher than average degree of
distinctiveness.
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.
e) Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or
services in question come from the same undertaking or, as the case may be, from
economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998,
C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the
public must be appreciated globally, taking into account all factors relevant to the
circumstances of the case (see Canon, § 16).
In addition, the global assessment of the risk of confusion entails certain
interdependence between the factors taken into account and, in particular, between
the similarity of the trademarks and the similarity of the goods or services covered.
Accordingly, a low degree of similarity between those goods or services may be
offset by a high degree of similarity between the marks, and vice versa (23/10/2002,
T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods are partly identical, partly similar to various degrees
and partly dissimilar. The signs are at most visually and aurally similar to an average
degree, while they share a high degree of conceptual similarity in the distinctive
concept of ‘bird’. These similarities create a risk of association between the signs.
Indeed, 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 this case, it is highly conceivable
that the relevant consumer will perceive the contested mark as a sub-brand, a
variation of the earlier mark, configured in a different way according to the type of
goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Although the contested sign is initiated by a word not present in the earlier mark, and
the earlier mark is a relatively short sign, the signs’ similarities outweigh their
differences.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the English-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration No 2 654 028. 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.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical or similar to various degrees to those of the earlier trade
mark.
Decision on Opposition No B 2 478 140 page: 6 of 6
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 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some 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
Benoit VLEMINCQ Christian RUUD Begoña URIARTE
VALIENTE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.