OPPOSITION No B 2 766 973

d.velop AG, Schildarpstr. 6-8, 48712 Gescher, Germany (opponent), represented by LLR Legerlotzlaschet Rechtsanwälte GBR, Mevissenstr. 15, 50668 Köln, Germany (professional representative)

a g a i n s t

Huawei Technologies Co., Ltd., Administration Building Huawei Technologies Co., Ltd. Bantian, Longgang District, Shenzhen, Guangdong 518129, People’s Republic of China (applicant), represented by Forresters, Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 766 973 is upheld for all the contested goods.

2.        European Union trade mark application No 15 478 571 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 15 478 571, ‘D3’. The opposition is based on, inter alia, European Union trade mark registration No 13 258 694, ‘d.3’. 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 13 258 694.

1. The goods and services

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

Class 9:        Data processing programs; Computer software for recording, managing, storage, output, processing, control, preservation, archiving and providing of documents and data; Computer software for recording, managing, storage, output, processing, control, preservation, archiving and providing of documents and data for mobile terminals (apps); Computer software for representing business processes and workflow, including incoming-invoice workflow; Data processing apparatus and Computer hardware and parts thereof and Peripheral devices, In particular keyboards, Monitors, Printers, Floppy disk drives, Interfaces, Cards, Image scanning apparatus, Memory apparatus and memory carriers; Apparatus for recording, transmission or reproduction of sound and/or images.

Class 35:        Business consultancy, in particular with regard to EDP and the optimisation of business work processes; Compilation and systemisation of data on a central computer; Organisational consultancy in connection with archive management; Archiving, records management; Organisational consultancy with regard to the archiving of data and archive planning; Online provider services, Namely collection of professional business information, included in class 35; Online provider services, namely collection of business information, in particular on the Internet, included in class 35; Organization consultancy; Business consulting services.

Class 38:        Providing access to an electronic communications platform for the sending, keeping available and joint editing of documents; Database services and operation of databases, namely providing access to archived data for authorised parties; Transmission of data for archiving and information purposes, online providers, Namely transmission of information and providing of information in the field of telecommunications, included in class 38; Leasing access time to a computer database; Providing access to an electronic platform, in particular a web server for using computer software; Telecommunications; Internet providers, Namely providing access to the Internet.

Class 41:        Conducting training courses in connection with computers, computer programs and computer peripheral devices and computer ancillary equipment, and in connection with the archiving of data and archive management; Providing of training; Post-school training.

Class 42:        Preparation of data processing programmes; Technical consultancy, in particular with regard to the archiving of data and archive planning; Creating software for databases; Cloud computing; Software as a service (SaaS); Software consultancy, Maintenance and updating of computer software, Computer software technical support services; Internet and IT security consultancy; Technical consultancy in connection with computers, computer programs, computer peripheral devices and computer ancillary equipment; Technical consultancy with regard to the archiving of data and archive planning; Technical consultancy in connection with archive management; Rental and maintenance of memory space for hosting data, for others (hosting); Rental of web servers and providing of memory space on the Internet; Conversion of data or documents from physical to electronic media; Design and creation of internet applications and e-commerce applications (computer software); Providing an electronic communications platform (computer software) for the sending, keeping available and joint editing of documents; Providing an electronic platform (computer software), in particular a web server for using computer software.

The contested goods are the following:

Class 9:        Communications equipment; data communications apparatus; telecommunications apparatus; computers; portable computers; tablet computers; protective cases for tablet computers; wearable computers; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; wearable digital electronic communication devices; smartphones in the shape of a watch or a bracelet; smart bracelets with the functions of wireless technology and remote control for use with mobile phones which can display the caller's number and short message; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures; mobile phones; smartphones; protective cases for mobile phones; batteries for phones; earphones; headphones; audio equipment; stereos; wearable audio equipment; speakers; loudspeakers; set-top boxes; routers; wireless routers; communication software; application software; jewellery that communicates data; computer stylus; camcorders; protective films adapted for computer screens or mobile telephones; wearable activity trackers; covers for smartphones; cases for smartphones; selfie sticks [hand-held monopods]; parts and fittings for all the aforesaid goods.

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

The term ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services 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 services.

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 communications equipment; data communications apparatus; telecommunications apparatus; computers; portable computers; tablet computers; wearable computers are included in the broad category, or overlap with, the opponent’s computer hardware, in Class 9. Therefore, they are identical.

The contested mobile phones; smartphones; earphones; headphones; audio equipment; stereos; wearable audio equipment; wearable digital electronic communication devices; smartphones in the shape of a watch or a bracelet; speakers, loudspeakers; camcorders are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound and/or images. Therefore, they are identical.

The contested communication software; application software overlap with the broad category of the opponent’s computer software for recording, managing, storage, output, processing, control, preservation, archiving and providing of documents and data. Therefore, they are identical.

The contested smart watches are computerised watches which are called smart as they use digital communication technology to provide many of the functions of a computer, especially internet access and social networking applications (apps); consequently they possess many more functions than the standard function of measuring time as in case of traditional watches (or e.g. calculators, calendars in case of electronic watches). For this reason the contested smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; smart bracelets with the functions of wireless technology and remote control for use with mobile phones which can display the caller's number and short message; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; jewellery that communicates data are similar to a high degree to the opponent’s computer hardware. They are often offered by the same companies which produce synced devices, and thus they are also complementary to each other. Furthermore, they are sold through the same distribution channels and target the same public. They also have the same methods of use.

The contested smart bands; wearable activity trackers are devices for monitoring and tracking fitness-related metrics (e.g. distance walked/run, consumption of calories, heartbeat or quality of sleep) often in the form of wristbands or other arm wearable devices. These fitness tracking functions can also be used on smartphones with specially designed applications. These types of fitness activity trackers are developed more and more and allow many other functions than tracking fitness activity, for instance, GPS, or sharing via social media activity achievements, or statistics and analysis of activity data; some of them are used for medical monitoring. Therefore, these devices and the opponent’s computer hardware are offered by the same producers and are sold to the same consumer circles through the same distribution channels. Moreover these goods can be synchronised and complementary to each other. For these reasons they are similar to a high degree.

Smart eyeglasses are wearable computer glasses that, inter alia, add information alongside to what the wearer sees. Like other computers, smart glasses may collect information from internal or external sensors and support wireless technologies like Bluetooth, Wi-Fi and GPS. Therefore, the contested smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures are also similar to a high degree to the opponent’s computer hardware. They are offered by the same producers, sold through the same distribution channels, have the same relevant public and can be complementary.

A set-top box is an information appliance device that generally contains a TV-tuner input and displays output to a television set and an external source of signal, tuning the source signal into content in a form that can then be displayed on the television screen or other display device. A router is a computer networking device that performs traffic directing functions on the internet. Therefore, the contested set-top boxes; routers; wireless routers are similar to a high degree to the opponent’s apparatus for recording, transmission or reproduction of sound and/or images. They are offered by the same producers, sold through the same distribution channels, have the same relevant public and can be complementary.

The contested protective cases for tablet computers; protective cases for mobile phones; protective films adapted for computer screens or mobile telephones; covers for smartphones; cases for smartphones are related to the opponent’s apparatus for recording, transmission or reproduction of sound and/or images. It is clear that a link exists between these goods and they can be considered complementary to each other, in the sense that the contested goods are intended to be used for carrying and protecting the opponent’s goods. Furthermore, they are produced by the same manufacturers, can be sold through the same distribution channels, are often used in combination and target the same public. Therefore, these goods are similar.

The contested batteries for phones; computer stylus; selfie sticks [hand-held monopods]; parts and fittings for all the aforesaid goods [communications equipment; data communications apparatus; telecommunications apparatus; computers; portable computers; tablet computers; protective cases for tablet computers; wearable computers; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; wearable digital electronic communication devices; smartphones in the shape of a watch or a bracelet; smart bracelets with the functions of wireless technology and remote control for use with mobile phones which can display the caller's number and short message; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures; mobile phones; smartphones; protective cases for mobile phones; batteries for phones; earphones; headphones; audio equipment; stereos; wearable audio equipment; speakers; loudspeakers; set-top boxes; routers; wireless routers; communication software; application software; jewellery that communicates data; computer stylus; camcorders; protective films adapted for computer screens or mobile telephones; wearable activity trackers; covers for smartphones; cases for smartphones; selfie sticks [hand-held monopods]] are also related to apparatus for recording, transmission or reproduction of sound and/or images. They are complementary, can be sold by the same producers and have the same relevant public. Therefore, they are considered similar to a low degree.

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 different degrees are directed at the public at large.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased goods.

3. The signs

d.3	D3
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 earlier mark is a word mark composed of three standard characters, the letter ‘d’, the number ‘3’, and a dot in between.

The contested mark is composed of the capital letter ‘D’ and the number ‘3’. In case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

The whole element ‘D3’ of the contested sign will, at least by part of the public, be associated with, inter alia, an abbreviation for DOCSIS 3.0, an international communications standard or a Java programming script library for manipulating documents based on data (Data-Driven Documents). It may also be seen as a version of a computer, a smartphone, a smartwatch or another technical device or its accessories. Bearing in mind that the relevant goods are computer- and technology-related, this element is weak for the goods for this part of the public, namely for communications equipment; data communications apparatus; telecommunications apparatus; computers; portable computers; tablet computers; protective cases for tablet computers; wearable computers; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; wearable digital electronic communication devices; smartphones in the shape of a watch or a bracelet; smart bracelets with the functions of wireless technology and remote control for use with mobile phones which can display the caller's number and short message; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures; mobile phones; smartphones; protective cases for mobile phones; batteries for phones; earphones; headphones; audio equipment; stereos; wearable audio equipment; speakers; loudspeakers; set-top boxes; routers; wireless routers; communication software; application software; jewellery that communicates data; computer stylus; camcorders; protective films adapted for computer screens or mobile telephones; wearable activity trackers; covers for smartphones; cases for smartphones; selfie sticks [hand-held monopods]; parts and fittings for all the aforesaid goods. For the other part of the public, who does not perceive any meaning in the mark, the letter ‘D’ and the number ‘3’ will be perceived as such, and are distinctive for the goods.

Regarding the earlier mark, it cannot be excluded that it will be perceived (despite the dot) at least by part of the public, with the same meaning as the contested mark: as an abbreviation for DOCSIS 3.0, an international communications standard or a Java programming script library for manipulating documents based on data (Data-Driven Documents) or as a version of a computer, a smartphone, a smartwatch or another technical device or its accessories. Bearing in mind that the relevant goods are also computer- and technology-related, this element is weak for these goods, namely computer software for recording, managing, storage, output, processing, control, preservation, archiving and providing of documents and data;  computer hardware, and apparatus for recording, transmission or reproduction of sound and/or images. For the other part of the public, who does not perceive any meaning in the mark, the letter ‘d’, the dot and the number ‘3’ will be perceived as such, and are distinctive.

Visually, the signs coincide in the letter ‘D’ and the number ‘3’, which are distinctive for the relevant goods. The marks differ in the dot, also distinctive, put in the middle of the earlier sign.

Therefore, the signs are visually similar to an average 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 letter and number ‘D’ and ‘3’, present identically in both signs. The pronunciation differs in the sound of the dot (if pronounced) of the earlier sign, which has no counterpart in the contested mark.

Therefore, the signs are, aurally, at least highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. A part of the public in the relevant territory will perceive an identical or similar meaning in the signs, as explained above. For this part of the public, the signs are conceptually similar to a high degree.

For the part of the public that does not perceive the above described meaning in any of the marks, the signs coincide in the concept of the letter ‘D’ and the number ‘3’. The signs are therefore considered conceptually similar to, at least, a high degree for this part of the public.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all of the goods in question, namely for the goods  in Class 9.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods and services. Therefore, a lesser degree of similarity between goods and services 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, the goods are identical or similar to various degrees. They target the public at large. The degree of attention is average to high.

The signs are visually similar to an average degree and aurally highly similar. They are conceptually highly similar.

Taking into account all the relevant circumstances of the case, the differences between the marks, which results only in the difference of a dot, is not sufficient to counterbalance the similarity between them. The relevant public may believe that the relevant goods come from the same undertaking or at least economically-linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign 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).

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 258 694. It follows that the contested trade mark must be rejected for the contested goods found to be identical or similar, even to a low degree, to those of the earlier trade mark. The difference of the dot is not sufficient to outweigh the similarities originating from the fact that the sign reproduce the same letter and number placed in the same sequence.

As the earlier right, European Union trade mark registration No 13 258 694 ‘d.3’ 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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Judit NÉMETH

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.