OPPOSITION No B 2 520 461

Groupe Canal+, SA, 1, place du Spectacle, 92130 Issy Les Moulineaux, France (opponent), represented by Brandstorming, 11, rue Lincoln, 75008 Paris, France (professional representative)

a g a i n s t

Aprotech GmbH, Happurger Str. 62b, 90482 Nürnberg, Germany (applicant), represented by Breuer Lehmann Rechtsanwälte Partnerschaft MBB, Steinsdorfstr. 19, 80538 München, Germany (professional representative).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 520 461 is upheld for all the contested goods.

2.        European Union trade mark application No 13 645 081 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 645 081. The opposition is based on European Union trade mark registration No 8 699 291. The opponent invoked Article 8(1)(b) EUTMR.

	CamCube
Earlier trade mark	Contested sign

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The opponent based the opposition on goods in Class 9 only. Following the revocation of part of the goods and services of the earlier mark by Cancellation Decision No C 11012 of 16/11/2016, the goods on which the opposition is based are the following:

Class 9: Decoders; Remote controls; antennas, satellite dishes.  

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 goods are the following:

Class 9: Industrial PC; Computers and computer hardware; Computer components and parts; Computer modules; Computer programs for image processing; Computer interface apparatus; Computer software.

Computer software, computer programs for image processing are similar to the opponent’s decoders given that they are complementary: decoders may operate with software, which is furthermore likely to be developed by the same company developing the decoder. The goods can also coincide in distribution channels.

Industrial PC; computers and computer hardware; computer components and parts; computer modules; computer interface apparatus are similar to a low degree to the opponent’s decoders in the sense that they can be expected to be produced and marketed by the same IT companies active in the development of computers and computer hardware. They can also coincide in sales outlets.

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 similar to various degrees are directed at the public at large, as well as a professional public expert in the field of IT, or working with industrial PCs. The degree of attention will range from average to high, depending on the expertise of the relevant public and the price of the goods.

3. The signs

	CamCube
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘CUBE’, as well as the differing element ‘LE’, are meaningful in certain territories, for example, in those countries where French is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The earlier mark is a figurative mark consisting of the word element ‘LE CUBE’ written in grey standard upper case characters, preceded by a ‘+’ sign within a black rectangle. The contested sign is a word mark ‘CamCube’.

The ‘+’ sign will be perceived as such in the earlier sign; this is nevertheless a basic symbol devoid of distinctiveness. The French definite article, ‘LE’ is also a non-distinctive element. The common element ‘CUBE’ of both signs refers to a solid object with six square surfaces which are all the same size in French [https://www.collinsdictionary.com/dictionary/english-french/cube]; this meaning has no direct relation to the goods and therefore its distinctiveness is normal.

The contested sign will be perceived by the relevant public as consisting of two words that both have a concrete meaning, ‘Cam’ and ‘Cube’; the recognition of the different concepts is also helped by the visual distinction made by capitalising the letters ‘C’ and ‘C’. In the context of the goods at hand, computer hardware, software, interface and modules ‘Cam’ will be perceived as a reference to caméra, a piece of equipment that is used for taking photographs [https://www.collinsdictionary.com/dictionary/english-french/camera ]. As such, this element is weak for the contested goods, which can all operate or be equipped with a camera.

Visually, the signs coincide in ‘CUBE’. They differ in the typeface of the earlier sign, although it is fairly standard. They also differ in ‘LE’ and the ‘+’ sign, although these elements have limited distinctiveness for the relevant public. The differing element ‘Cam’ of the contested sign is also weak.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘CUBE’ present identically in both signs. The pronunciation differs in the sounds of the letters ‘L-E’ in the earlier sign, and the ‘+’ sign, in case it is pronounced; in any event, these elements are non-distinctive, and their impact on the comparison is correspondingly limited. The contested sign’s aurally differing element, ‘Cam’ is of weak distinctive character.

Therefore, the signs are aurally similar to an average degree.

Similar considerations apply to the conceptual comparison. In view of the coincidence in the concept of ‘Cube’, taking into account the differing concepts in ‘Le’, ‘+’ and ‘Cam’, but at the same time considering their distinctive character, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and 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, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.

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 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)

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 signs visually, aurally and conceptually coincide in the most distinctive element of the signs, the word ‘CUBE’, which has an independent distinctive role in both signs. The differing elements are non-distinctive or weak and therefore cannot offset the similarity.

Consequently, even in the context of lowly similar goods, a likelihood of confusion cannot be excluded.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Francesca DRAGOSTIN

Marianna KONDAS

Julie GOUTARD

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.