OPPOSITION No B 2 766 395

British Telecommunications public limited company, 81 Newgate Street, London EC1A 7AJ, United Kingdom (opponent), represented by Miles Beckingham, pp Ground Floor, Faraday Building, 1 Knightrider Street, London EC4V 5BT, United Kingdom (employee representative)

a g a i n s t

Shenzhen Xingheliliang Technology Co., Ltd, Rm.402, Blk. A, Bldg. 15, Xinbafang, Caiwuwei, Guiyuan St., Luohu Dist., Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 766 395 is partially upheld, namely for the following contested goods:

Class 9:         Smartglasses; smartwatches; cell phone straps; wearable activity trackers; covers for smartphones; cases for smartphones; baby monitors; 3D spectacles; anti-theft warning apparatus; electronic pens [visual display units]; mobile phone cases; display screen protectors in the nature of films for mobile phones.

2.        European Union trade mark application No 15 504 673 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 9:         Containers for contact lenses; eye glass cords; rechargeable batteries.

Class 28:         Practical jokes [novelties]; carnival masks; elbow guards [sports articles]; knee guards [sports articles]; in-line roller skates; ornaments for Christmas trees, except illumination articles and confectionery; artificial fishing bait; floats for fishing; fish hooks; fishing tackle; electronic action toys; electronic learning toys; toys; belts (weight lifting -) [sports articles]; protective padding for sports; shock absorption pads for protection against injury [sporting articles]; body protectors for sports use; arm guards for sports use; wrist guards for athletic use.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods in Classes 9 and 28 of European Union trade mark application No 15 504 673 . The opposition is based on European Union trade mark registration No 1 879 055 for the word mark ‘BT’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to Classes 9 and 38 for the territory of the United Kingdom.

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 and services

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

Class 9: Telecommunications apparatus; computer software, hardware and firmware and computer peripherals; encoded cards.

Class 16: Printed matter; publications; non-encoded telephone cards.

Class 35: Business information services, provided on-line from a computer database or by means of web pages on the global computer network; the bringing together, for the benefit of others, of a variety of goods and services enabling customers to conveniently view and purchase those goods or subscribe to those services, from a general merchandise internet web site; retail services; provision of services to enable others to advertise, to view and/or purchase goods over a global computer network; organisation, operation, management, sale and supervision of promotional and incentive schemes; information and advisory services all relating to jobs and on-line recruitment.

Class 36: Information services and interactive database information services, all relating to finance, insurance, shares and share dealing; issuing of travel cards; database, on-line and Internet information, advisory and consultancy services, all relating to the aforesaid services; pricing packages and pricing options for telecommunications services, namely the provision of financial payment deals and payment schemes; credit cards, charge card and debit card services.

Class 38: Telecommunications services; telecommunication of information (including web pages); electronic mail services; providing user access to the Internet; providing telecommunications connections to the Internet or database; telecommunications portal services.

Class 39: Information services relating to travel and transport ; booking and ticketing services relating to transport and travel; database, on-line and Internet information, advisory and consultancy services; interactive database information services, all relating to the aforesaid services.

Class 41: Information and advisory services relating to education, training, entertainment, sport, recreation, theatre, television, the music and publishing; publishing services; reservation booking and ticketing services; on-line and interactive database information services, all relating to the aforesaid services.

Class 42: Information and advisory services all relating to literacy, artistic, musical, design, gardening and careers; reservation services for hotel accommodation and restaurants; on-line and interactive database information services, all relating to the aforesaid services; research and development services, consultancy services and testing services, all relating to telecommunications, communications networks and systems, computer programming, computer software and information systems; computer and telecommunications systems and networks analysis; computer programming services; information and advisory services relating to weather, restaurants and news.

The contested goods are the following:

Class 9: Smartglasses; smartwatches; cell phone straps; wearable activity trackers; covers for smartphones; cases for smartphones; baby monitors; containers for contact lenses; 3D spectacles; anti-theft warning apparatus; electronic pens [visual display units]; mobile phone cases; display screen protectors in the nature of films for mobile phones; eye glass cords; rechargeable batteries.

Class 28: Practical jokes [novelties]; carnival masks; elbow guards [sports articles]; knee guards [sports articles]; in-line roller skates; ornaments for Christmas trees, except illumination articles and confectionery; artificial fishing bait; floats for fishing; fish hooks; fishing tackle; electronic action toys; electronic learning toys; toys; belts (weight lifting -) [sports articles]; protective padding for sports; shock absorption pads for protection against injury [sporting articles]; body protectors for sports use; arm guards for sports use; wrist guards for athletic use.

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 ‘namely’, used in the opponent’s list of goods and services in Class 36 to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

The term ‘except’, used in the applicant’s list of goods in Class 28, is also exclusive and restricts the scope of protection to goods other than those in the list that follows.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 9

As a preliminary remark, it has to be noted that telecommunication nowadays is considered to cover a wide range of communication by electronic or electric means, such as communication through radio, telephone, telegraph, television and computer. Therefore, the opponent’s telecommunications apparatus in Class 9 may encompass all of these types of communication technologies, such as telephones (including portable or mobile phones), radios and even computers.

The contested baby monitors are devices, based on radio transmission, used to listen remotely to sounds made by an infant. These goods are included in, or overlap with, the opponent’s telecommunications apparatus. They are identical.

The contested smartglasses are wearable computer glasses that add information alongside or to what the wearer sees. The contested smartwatches are computerised wristwatches with a functionality that effectively fulfils the role of wearable computers. The contested wearable activity trackers are devices used to monitor daily activity, such as step counts, sleep and heart rate, and also the level of different sports activities. All these goods are found to be highly similar to the opponent’s telecommunications apparatus, since they may have the same functionalities and methods of use, as mini portable computers, as the opponent’s broad category of telecommunications apparatus. Furthermore, these goods are most often produced by the same manufacturers, namely by manufacturers of ‘smart’ products; they target the same group of consumers and are distributed through the same channels.

The contested anti-theft warning apparatus is any device used to prevent or deter the unauthorised appropriation of items considered valuable. This type of apparatus is similar to the opponent’s telecommunications apparatus, since they have the same nature and/or method of use (for example via the transmitting of a signal). It cannot be excluded that the contested goods are highly developed and specialised for a purpose relevant to products of the telecommunication industry. Furthermore, these goods may target the same public and may have the same distribution channels.

The contested 3D spectacles are glasses that create the illusion of three-dimensional images for the viewer; these goods are similar to a low degree to the opponent’s telecommunications apparatus, as they may have the same distribution channels and relevant public. In addition to the possibility that they might be produced by the same manufacturers, they might also be complementary to the opponent’s telecommunications apparatus.

The contested electronic pens [visual display units] are input devices that capture the handwriting or brush strokes of a user and convert handwritten analogue information created using ‘pen and paper’ into digital data, enabling the data to be utilised in various applications. These goods are similar to a low degree to the opponent’s computer peripherals, as these goods may be complementary to each other. Furthermore, they may target the same public and be distributed through the same channels.

The contested cell phone straps; covers for smartphones; cases for smartphones; mobile phone cases; display screen protectors in the nature of films for mobile phones are various protective or decorative accessories used in relation to mobile phones. It cannot be excluded that these goods have the same distribution channels and relevant public as the opponent’s telecommunications apparatus, which as a broad term also includes mobile phones. The contested goods are, indeed, complementary to the opponent’s goods, as they are common accessories for mobile phones/smartphones. Therefore, these goods are considered similar to a low degree.

However, the contested rechargeable batteries are considered dissimilar to any of the opponent’s goods and services. These contested goods are small accumulators that are a source of electric current. They are different from the opponent’s goods in Class 9 (e.g. telecommunication apparatus, computer software and hardware) and in Class 16 (printed matter, publications), as these goods have different natures, methods of use and purposes. It would be unusual for these goods to have the same distribution channels and relevant public.

Furthermore, the contested containers for contact lenses and eye glass cords are accessories used for various optical devices such as lentils or eye glasses. Likewise, these goods are different from any of the opponent’s goods, as they have nothing relevant in common with them. It can be safely excluded that these goods will be complementary to or in competition with any of the opponent’s electronic goods or printed matter and publications.

In conclusion, it has to be noted that, by their nature, goods are generally dissimilar to services. This is because goods are articles of trade, wares or merchandise. Their sale usually entails the transfer in title of something physical. Services, on the other hand, consist of the provision of intangible activities.

Therefore, the abovementioned contested goods (rechargeable batteries, containers for contact lenses and eye glass cords) are also considered dissimilar to all of the opponent’s services in Classes 35, 36, 38, 39, 41 and 42.

For the sake of completeness, it has to be mentioned that the opponent’s services in Class 35, in addition to business-related services and advisory services for businesses include retail services for products in general.

However, retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary.

Contested goods in Class 28

The same conclusions can be drawn with regard to the opponent’s goods and services in all the abovementioned classes and the contested goods in Class 28.

The contested practical jokes [novelties]; carnival masks; electronic action toys; electronic learning toys; toys; ornaments for Christmas trees, except illumination articles and confectionery are games and toys or ornaments with decorative character. The contested elbow guards [sports articles]; knee guards [sports articles]; in-line roller skates; artificial fishing bait; floats for fishing; fish hooks; fishing tackle; belts (weight lifting -) [sports articles]; protective padding for sports; shock absorption pads for protection against injury [sporting articles]; body protectors for sports use; arm guards for sports use; wrist guards for athletic use are different types of protective wear and equipment, or accessories for sport and leisure. All these goods are dissimilar to all of the opponent’s goods in Classes 9 and 16, as they do not have anything relevant in common, such as their natures, methods of use, purposes, relevant publics or distribution channels, and they are neither complementary nor in competition. Furthermore, these goods are dissimilar to all the opponent’s services for the reasons mentioned above.

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, as well as at a professional public to the extent that they may concern sophisticated electronic equipment and smart devices. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods.

3. The signs

BT
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.

For reasons of procedural economy, the Opposition Division will restrict the assessment of the marks to the part of the public for which the word ‘DUCK’ (‘a very common water bird with short legs, a short neck, and a large flat beak’, Collins English Dictionary Online) is meaningless, for instance to the Spanish- and Portuguese-speaking parts of the relevant public.

The earlier mark is the word mark ‘BT’ and the contested sign is a figurative sign consisting of the verbal element ‘BtDuck’ bearing almost no stylisation. It must be recalled that, in the case of word marks, the word as such is protected and not its written form; therefore, it is immaterial whether the earlier mark is in upper or lower case letters.

The coinciding element, ‘BT’, of the signs has no meaning for the relevant public and is, therefore, distinctive. The second element of the contested sign, ‘Duck’, will be perceived as such, due to the upper case letter ‘D’, whereas the following letters are lower case. It is meaningless for the relevant public and, therefore, is also of normal distinctiveness.

Consequently, neither of the signs has elements that could be considered clearly more distinctive and, furthermore, they do not bear any visually more dominant elements.

Visually and aurally, the signs coincide in the letters ‘BT’, being the only verbal element of the earlier mark and the initial verbal element of the contested sign. They differ in the second verbal element, ‘Duck’, in the contested sign.

It must be born in mind that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The earlier mark is a short sign with clearly identifiable letters, ‘BT’. However, the verbal element ‘Bt’ in the contested sign, regardless of its meaningless character for the relevant public, will be dissected and individually perceived at the beginning of the sign due to its graphical depiction including title case letters. Furthermore, consumers generally tend to focus on the beginning of a sign 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, for the abovementioned reasons, 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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

Firstly, 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).

The goods are partly dissimilar and partly identical and similar to different degrees; the degree of attention of the relevant public may vary between average and high for the reasons explained above in section b).

In spite of the difference in the additional verbal element in the contested sign, there is a likelihood of confusion, including a likelihood of association, because the earlier mark (‘BT’) is entirely incorporated in, and moreover at the beginning of, the contested sign (‘Bt’). In addition, it has been concluded that the earlier mark enjoys a normal degree of distinctiveness in relation to the conflicting goods.

Furthermore, it has been settled by the relevant law that 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark, ‘BtDuck’, as a sub-brand, a variation of the earlier mark, ‘BT’, 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).

In addition, 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 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, for the reasons discussed above, the existence of a likelihood of association may be justified even for goods that are similar to a low degree, which, by way of an example, consumers may assume to be included in a more remote category of products offered by economically-linked companies whose trade marks bear the same initial part, ‘BT’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish- and Portuguese-speaking parts of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 different degrees to those of the earlier trade mark.

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.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 21/09/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 26/01/2017. Upon request of the opponent, this time limit was subsequently extended until 26/05/2017.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Gueorgui IVANOV

Manuela RUSEVA

Dorothée 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.