OPPOSITION DIVISION
OPPOSITION No B 2 503 020
Meizu Technology Co., LTD., Meizu Technology Building Technology & innovation
Coast Guangdong Province, Zhuhai City, People’s Republic of China (opponent),
represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy
(professional representative)
a g a i n s t
Meilu Electronic (Shenzhen) Co. Ltd., 7F, No.B4 Science and Technology Industrial
Park, Fengxin Road, Loucun Community, Gongming Office, Guangming New Area,
Shenzhen, People’s Republic of China (applicant), represented by José Izquierdo
Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional
representative).
On 24/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 503 020 is partially upheld, namely for the following
contested services:
Class 35: Demonstration of goods; Advertising; Shop window dressing; On-line
advertising on a computer network; Rental of advertising time on
communication media; Retail purposes (Presentation of goods on
communication media, for -); Planning services for advertising; Business
management consultancy; Marketing research; Commercial information and
advice for consumers [consumer advice shop]; Administration (Commercial -)
of the licensing of the goods and services of others; Outsourcing services
[business assistance]; Import-export agencies; Sales promotion for others;
Procurement services for others [purchasing goods and services for other
businesses]; Marketing; Rental of vending machines.
2. European Union trade mark application No 13 609 995 is rejected for all the
above services. 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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
Decision on Opposition No B 2 503 020 page: 2 of 9
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 609 995 for the figurative mark ,
namely against all the goods and services in Classes 9, 11 and 35. The opposition is
based on international trade mark registration No 903 967 designating the EU for the
word mark ‘MEIZU’, international trade mark registration No 1 166 981, International
trade mark registration No 1 190 799 (both designating the EU) and European Union
trade mark registration No 12 338 166, all for the figurative mark
. The opponent invoked Article 8(1)(b) EUTMR.
Preliminary remark
The opponent initially filed the opposition against all the goods and services in
Classes 9, 11 and 35. The contested application was, however, previously partially
refused for some goods in Class 9 pursuant a decision in parallel opposition
B 2 503 293 of 21/03/2016.
Following this partial refusal of the contested mark in previous parallel proceedings,
the opponent was requested in the present proceedings on 14/10/2016 to inform the
Office before 14/12/2016 whether or not it wished to maintain its opposition. Since no
reply was received, the Office shall give a ruling on the opposition. Consequently the
opposition is considered to be filed against the remaining goods in Classes 9 and 11.
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. Likelihood of confusion in relation to the earlier International trade mark
registrations No 903 967, No 1 166 981 and No 1 190 799
a) The goods and services
The goods and services on which the opposition is based are the following:
International trade mark registration No 903 967
Class 9: Computer outside equipments (terms considered too vague in the opinion of
the International Bureau – Rule 13.2)b) of the Common Regulations); auto music
player; loud speaker; cabinets for loudspeakers; electronic pen (visual demonstration
Decision on Opposition No B 2 503 020 page: 3 of 9
device); cameras (cinematographic-); recording device; calculating machines; VCD
machine; DVD machine.
International trade mark registration No 1 166 981
Class 9: Computer peripheral devices; computer keyboards; printers for use with
computers; display (electronic); mouses [data processing equipment]; scanners [data
processing equipment]; compact discs [audio-video]; mobile phones; mobile phones
with function of transmission of message; video telephones; smart telephones;
personal digital assistants; personal digital assistants with global positioning system;
personal digital assistants with function of wireless transmission; personal digital
assistants with function of communications; Internet phones; camera phones; tablet
computers; laptop computers; ultra-mobile personal computers (UMPC); earphones;
earphones with function of wireless communications; transmission cables; batteries;
alternating current converters; sound boxes; cameras [photography]; sound
recording equipment; calculators; audio and video players; low-voltage power
supplies; battery chargers; mobile telephone holster; mobile telephone housings;
personal digital assistants (PDA) housings; memory cards; battery charger for
personal digital assistants (PDA) or mobile phone; chargers used in cars for personal
digital assistants (PDA) or mobile phone; wireless remote controller; navigation
apparatus for vehicles [on-board computers]; multimedia players; telephone set
sheath.
International trade mark registration No 1 190 799
Class 9: Bags adapted for laptops; sleeves for laptops; data processing apparatus;
computer software (recorded); computer operating programs, recorded; notebook
computers; computer game programs; downloadable ring tones for mobile phones;
downloadable music files; laptop computers; time recording apparatus;
phototelegraphy apparatus; electronic notice boards; telephone apparatus; video
telephones; portable telephones; hands free kits for phones; cell phone cases; cell
phone straps; digital photo frames; television apparatus; portable media players;
headphones; cameras (photography); material for electricity mains (wires, cables);
integrated circuits; plugs, sockets and other contacts (electric connections);
transformers (electricity); low voltage power supplies; theft prevention installations,
electric; eyeglasses; galvanic cells; chargers for electric batteries.
Class 42: Research and development of new products for others; quality testing;
cosmetic research; biological research; forecasting (weather); material testing;
mechanical research; industrial design; design of interior decor; designing (dress);
computer programming; computer software design; consultancy in the design and
development of computer hardware; recovery of computer data; conversion of data
or documents from physical to electronic media; creating and maintaining Web sites
for others; data conversion of computer programs and data (not physical
conversion); rental of network server; monitoring of computer systems by remote
access; search engines (providing) for the Internet; software as a service (saas);
authenticating works of art.
The contested goods are the following:
Class 11: Lamps; Lampshades; Fairy lights for festive decoration; Flashlights; Light-
emitting diodes [LED] lighting apparatus; Vehicle lights; Germicidal lamps for
purifying the air; Electric cooking utensils; Cooking apparatus and installations;
Kitchen ranges [ovens]; Refrigerating appliances and installations; Fans [air-
conditioning]; Fans (Electric -) for personal use; Hair driers [dryers]; Heating
Decision on Opposition No B 2 503 020 page: 4 of 9
apparatus, electric; Taps for water pipes; Bath fittings; Radiators, electric;
Disinfectant apparatus; Water purifying apparatus and machines.
Class 35: Demonstration of goods; Advertising; Shop window dressing; On-line
advertising on a computer network; Rental of advertising time on communication
media; Retail purposes (Presentation of goods on communication media, for -);
Planning services for advertising; Business management consultancy; Marketing
research; Commercial information and advice for consumers [consumer advice
shop]; Administration (Commercial -) of the licensing of the goods and services of
others; Outsourcing services [business assistance]; Import-export agencies; Sales
promotion for others; Procurement services for others [purchasing goods and
services for other businesses]; Marketing; Rental of vending machines; Retail or
wholesale services for pharmaceutical, veterinary and sanitary preparations and
medical supplies.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
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.
Contested goods in Class 11
The contested Lamps; Lampshades; Fairy lights for festive decoration; Flashlights;
Light-emitting diodes [LED] lighting apparatus; Vehicle lights; Germicidal lamps for
purifying the air; Electric cooking utensils; Cooking apparatus and installations;
Kitchen ranges [ovens]; Refrigerating appliances and installations; Fans [air-
conditioning]; Fans (Electric -) for personal use; Hair driers [dryers]; Heating
apparatus, electric; Taps for water pipes; Bath fittings; Radiators, electric;
Disinfectant apparatus; Water purifying apparatus and machines are dissimilar to all
the opponent’s goods and services in Classes 9 and 35 of the earlier mark. They do
not have the same producers, distribution channels or points of sale. They are
neither complementary nor in competition with each other. Moreover, all of them have
a different purpose.
Contested services in Class 35
The contested Demonstration of goods; Advertising; Shop window dressing; On-line
advertising on a computer network; Rental of advertising time on communication
media; Retail purposes (Presentation of goods on communication media, for -);
Planning services for advertising; Business management consultancy; Marketing
research; Commercial information and advice for consumers [consumer advice
shop]; Administration (Commercial -) of the licensing of the goods and services of
others; Outsourcing services [business assistance]; Import-export agencies; Sales
promotion for others; Procurement services for others [purchasing goods and
services for other businesses]; Marketing; Rental of vending machines; Retail or
wholesale services for pharmaceutical, veterinary and sanitary preparations and
medical supplies are dissimilar to the goods in Class 9 and services in Class 42 of
the earlier marks. The contested services mostly concentrate on the promotion
of goods and/or services, business management and marketing while the
earlier goods are computer or industrial research related. These goods and
Decision on Opposition No B 2 503 020 page: 5 of 9
services have a dierent purpose, do not follow the same distribution
channels, do not target the same public and are not in competition, nor
produced/oered by the same companies. Therefore, they are dissimilar.
b) Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a
condition for a finding of likelihood of confusion. Since the goods and services are
clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not
fulfilled, and the opposition must be rejected as far as it is based on these IR.
For the sake of completeness, it has to be noted that in relation to the earlier
international trade mark registration No 903 967, the applicant requested that the
opponent submits proof of use of the mentioned earlier mark. However, given that the
opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine
the evidence of use filed by the opponent in relation to the earlier international trade
mark registration No 903 967.
2. Likelihood of confusion in relation to the earlier EUTM No 12 338 166
c) The goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark registration No 12 338 166
Class 35: Advertising; On-line advertising on a computer network; Commercial
information and advice for consumers (consumer advice shop); Presentation of
goods on communication media, for retail purposes; Commercial administration of
the licensing of the goods and services of others; Sales promotion for others;
Administrative processing of purchase orders; Accounts (Drawing up of statements
of –); Systemization of information into computer databases; Accounting;
Demonstration of goods; Advertising by mail order; Rental of advertising time on
communication media; Marketing studies; Import-export agencies; Personnel
recruitment; Arranging subscriptions to telecommunication services for others; Rental
of vending machines; Sponsorship search; Compilation of information into computer
databases.
The contested goods have already been listed above.
Contested goods in Class 11
The contested Lamps; Lampshades; Fairy lights for festive decoration; Flashlights;
Light-emitting diodes [LED] lighting apparatus; Vehicle lights; Germicidal lamps for
purifying the air; Electric cooking utensils; Cooking apparatus and installations;
Kitchen ranges [ovens]; Refrigerating appliances and installations; Fans [air-
conditioning]; Fans (Electric -) for personal use; Hair driers [dryers]; Heating
apparatus, electric; Taps for water pipes; Bath fittings; Radiators, electric;
Disinfectant apparatus; Water purifying apparatus and machines are dissimilar to all
the opponent’s services in Class 35. They do not have the same producers,
distribution channels or points of sale. They are neither complementary nor in
competition with each other. Moreover, they differ in nature and purpose.
Decision on Opposition No B 2 503 020 page: 6 of 9
Contested services in Class 35
The contested demonstration of goods includes, as a broader category the
opponent’s presentation of goods on communication media, for retail purposes;
Since the Opposition Division cannot dissect ex officio the broad category of the
contested services, they are considered identical to the opponent’s services.
The contested advertising; rental of advertising time on communication media; rental
of vending machines; administration (Commercial -) of the licensing of the goods and
services of others; commercial information and advice for consumers [consumer
advice shop]; Import-export agencies; retail purposes (Presentation of goods on
communication media, for -) are identically contained in the earlier European Union
trade mark registration No 12 338 166 (including synonyms).
The contested shop window dressing; on-line advertising on a computer network;
planning services for advertising; sales promotion for others are included in the
opponent’s broad category advertising. The services are identical.
The contested marketing research overlap with the opponent’s marketing studies.
The services are identical.
The contested marketing includes, as a broader category the opponent’s marketing
studies. Since the Opposition Division cannot dissect ex officio the broad category of
the contested services, they are considered identical to the opponent’s services.
The contested business management consultancy services are similar to a low
degree to the opponent’s advertising as they have the same purpose. They can
coincide in producer and end user.
The contested outsourcing services [business assistance]; procurement services for
others [purchasing goods and services for other businesses] are business
administration services. When compared with opponent’s personnel recruitment
which are also business administration services, they target the same end users via
similar distribution channels and may be performed by the same providers.
Consequently, they are considered to be at least similar.
The contested retail or wholesale services for pharmaceutical, veterinary and
sanitary preparations and medical supplies have no relevant connections with the
opponent’s goods and services. Retail services consist in bringing together, and
offering for sale, a variety of products, thus allowing consumers to conveniently
satisfy different shopping needs at one stop. This is not the purpose of the
opponent’s goods and services. The goods and services are normally not offered by
the same undertakings. They are neither complementary nor in competition. They do
not coincide in distribution channels either. Therefore, they are dissimilar.
d) 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.
Decision on Opposition No B 2 503 020 page: 7 of 9
In the present case, the services found to be identical or similar (to various degrees)
are specialised services directed at business customers with specific professional
knowledge or expertise. The degree of attention is considered to be high.
e) The signs
Earlier trade marks 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 earlier mark is a figurative mark consisting of the letters ‘MEIZU’, written in a
slightly stylised typeface, where the letters appear, from left to right, in bold letters to
being to regular and thin typeface.
The contested sign is a figurative mark containing five letters, ‘MEILU’, written in
upper case with a bold italic font.
The marks have no elements that could be considered more distinctive and more
dominant (visually eye-catching) than other elements.
Visually and aurally, the signs coincide in four letters/sounds out of five, namely
‘MEI*U’. However, they differ in their fourth letter/sound, ‘Z’ in the earlier sign and ‘L’
in the contested sign. Moreover, the marks visually differ in the stylisation of the
letters. All in all, signs are similar to a high 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.
f) 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.
Decision on Opposition No B 2 503 020 page: 8 of 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 services in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
g) Global assessment, other arguments and conclusion
Some of the services in Class 35 are identical, highly similar and similar, and the rest
of the goods and all the services are dissimilar. The earlier mark has a normal degree
of distinctiveness.
The signs are visually and aurally similar to a high degree. Moreover, as explained
above, these similarities are not counterbalanced by any specific meaning that would
help consumers distinguish between the signs on a conceptual level.
The differences between the signs lie in their fourth letter, ‘Z’ in the earlier mark
versus ‘L’ in the contested sign, as well as in their stylisations. However, in spite of
these differences the visual and aural coincidences are overwhelming. It is therefore
considered that the visual and aural similarities between the signs are clearly
sufficient to counteract the visual and aural dissimilarities.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the 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 12 338 166.
Even a high degree of attention for some of the services would not eliminate the
likelihood that the consumer will confuse the marks, for the reasons explained above.
In this respect, account should be taken of the fact that even consumers with 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), given they rarely have the
chance to make a direct comparison between different marks, but must trust in their
imperfect recollection of them.
It follows from the above that the contested trade mark must be rejected for the
services found to be identical or similar (to various degrees) to those of the earlier
trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods
and services is a necessary condition for the application of Article 8(1) CTMR, the
opposition based on this article and directed at these goods and services 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.
Decision on Opposition No B 2 503 020 page: 9 of 9
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Ana MUÑIZ RODRÍGUEZ Janja FELC Lars HELBERT
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 paidT