OPPOSITION No B 2 778 416

GoPro, Inc., 3000 Clearview Way, Bldg E, San Mateo California 94402, United States of America (opponent), represented by Mitscherlich, Patent- und Rechtsanwälte, Partmbb, Sonnenstraße 33, Germany, 80331 Munich, Germany (professional representative)

a g a i n s t

Fuzhou Baitai Internet Technology Co. Ltd., 206 (2F Linker No. 16 & 18 Zhiqian Road), 2F Linker Building 3-6, Xincheng Jiashengyuan, Cangxia Street,Taijiang District

Fuzhou, Fujian, People’s Republic of China (applicant), represented by José Izquierdo Faces Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 778 416 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 566 433, namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 12 621 901. The opponent invoked Article 8(1)(a),(b) and 8(5) 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. Given that cancellation requests are pending vis-a-vis some of the earlier rights, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 621 901.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 9: Photographic equipment, namely cameras, digital cameras, video cameras; portable handheld electronic devices for recording, storage, transmission or reproduction of photographic, video and multimedia content; cases, housings, and accessories for cameras, namely, batteries, lenses, digital photo viewers, wireless adapters, power adapters, adapter rings for attaching objects to cameras, remote controls, microphones, sd cards, photographic flash units, mounting devices for photographic equipment, tripods and camera straps; cases and bags for photographic apparatus; computer software for use in connection with photographic and video equipment and cameras; desktop and mobile photo and video editing software for photographs and videos taken with cameras and portable handheld electronic devices; computer software and software applications for use in uploading, downloading, editing, storing, distributing and sharing photographs and videos taken with cameras, digital cameras, video cameras and portable handheld electronic devices, via global and local computer networks and via mobile devices; downloadable user generated photos and videos in the field of general interest; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; fire-extinguishing apparatus.

The contested goods are the following:

Class 9: Calculating machines; mouse [computer peripheral]; mouse pads; covers for smartphones; cases for smartphones; cabinets for loudspeakers; microphones; headphones; selfie sticks [hand-held monopods]; tripods for cameras; goggles for sports; spectacles [optics]; sunglasses; eyeglass cases; anti-theft warning apparatus; electric door bells; bags adapted for laptops; telephone apparatus; sleeves for laptops; computer hardware.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are mostly directed at the public at large. Some of the goods at issue are inter alia IT, audio-visual and photographic devices and related accessories, which may be more specialised goods directed at both general customers, and professionals with specific professional knowledge or expertise in the field.

In the present case, depending on the type, sophistication and price of these goods, the degree of attention of both general consumers and the professional public may vary from average to high.

3. The signs

GOPRO
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 trade mark is a fanciful word ‘GOPRO’ which is meaningless for the vast majority of the consumers within the European Union. As such this word is normally distinctive in relation to the relevant goods. However to the other, English-speaking part of the public, this word element can be meaningful while dissected, and be associated with the respective meanings of the verbal elements, ‘GO’ (1. ‘to move or proceed, esp. to or from a point or in a certain direction’; found at https://www.collinsdictionary.com/dictionary/english/go, Collins English Dictionary online) and ‘PRO’ (1. ‘informal short for professional’ or 2. ‘adverb, in favour of a motion, issue, course of action, etc.’; 3. ‘preposition, in favour off’; https://www.collinsdictionary.com/dictionary/english/pro_1, Collins English Dictionary online). When perceived as such by some consumers of this part of the public, the verbal element ‘PRO’ in relation to all the goods may be seen as allusive to the professional character, and thus it is of weak distinguishing power, and when combined with other element ‘GO’ it can be understood as a marketing slogan suggesting a more ‘professional’ functions of the goods.

The verbal element ‘GoGou’ in the contested figurative sign has no meaning for the relevant public and is, therefore, distinctive in relation to the relevant goods. The verbal element is incorporated in bold shaded letters with a quite high degree of stylisation, of which the letters ‘G’ are capitalised and the remaining letters in lower case. However, for some part of the English-speaking public, the initial letters ‘GO ’ in the contested sign will be perceived as a separate word, namely the English word ‘go’ (dictionary reference as above), which is normally distinctive in relation to the goods in question.

As regards the contested sign, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, since the contested sign does not have any additional figurative elements apart from a fanciful font stylization embellishing the verbal element ‘GoGou’, it will be the one attracting the most of the consumers’ attention.

In principle, 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. In these circumstances, the same beginning ‘GO’ in both signs will be noted by the consumers. However, these coinciding letters are only two letters out of five letters constituting each mark.

Visually, the signs coincide in the initial letters ‘GO-’. However, they differ in their second parts ‘-PRO’ (the earlier sign) and ‘-GOU’ (the contested sign) in which only the letter ‘O’ coincides; nevertheless it is placed in different position and cannot be perceived as a commonality visible for the consumers. Moreover, the English-speaking public is more likely to differentiate two verbal elements in the contested sign ‘Go’ and ‘Gou’ rather than to focus on a single letter repeated in both signs. The signs are further differentiated by the font stylisation of the contested sign.

Therefore, even though the coinciding initial element ‘GO’ comes at the beginning in both the signs, they are visually similar to a low degree due to the different letter combinations of the following parts in the signs which give overall different impressions. As regards some part of the English-speaking part of the consumers, the signs can be seen even similar to a degree below low.

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 letters ‘GO-’, present identically in both signs. The pronunciation differs in the sound of the following letters ‛-PRO’ /‘-GOU’, which have quite notable aural differences.

Therefore, the signs are aurally similar to a low degree despite their similar structure (the same number and length of the syllables), in particular because they coincide only in the first, much shorter syllable of each sign.

Conceptually, neither of the signs has a meaning for the non-English-speaking 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 regards this part of the consumers within the European Union.

To the remaining English-speaking part of the public the contested sign as a whole is meaningless, however, some part of this public will recognize the word ‘go’ in the initial part of the sign ‘GoGou’, while to the earlier mark can be assigned the meanings as described above of the words ‘Go’ and ‘Pro’. Even though this mark has no precise meaning as a whole, it has some laudatory connotations corresponding to the expression ‘go professional’. Consequently, the signs are considered conceptually not similar.

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 trade mark in question enjoys a high degree of distinctiveness as result of its long standing and intensive use, enjoys a high degree of recognition among the relevant public in the European Union and it is reputed in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

On 03/02/2017 the opponent submitted the following evidence:

• Exhibit A1: an extract from Wikipedia.org (03/02/2017) containing an entry regarding the opponent’s company GoPro, Inc. describing the establishment (in 2002, US), history and products of the company (‘HERO’ action cameras for amateur photographers, mounts and other accessories including video editing software, and ‘KARMA’ consumer drone),
• Exhibit A2: a print out of an article from Forbes magazine’s website dated 04/03/2013 ‘GoPro evolution, From 35 mm Film to America’s Fastest-Growing Camera Company’,
• Exhibit A3: a list of search results from the Amazon.co.uk (03/02/2017) showing some of the opponent’s products offered for sale through the UK’s website of the Amazon online shop.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use, neither is it reputed in the European Union in relation to the goods and services for which it is registered.

First, and foremost, the Opposition Division notes that the documents filed explain certain facts in relation to the company’s corporate history itself and its founder, such as that it has been established in 2002 and that is based in the United States. Even though the evidence filed gives an outline of the brand ‘GoPro’ in connection to some goods in Class 9 (as action cameras sold under ‘HERO’ brand, related camera editing software, accessories or ‘KARMA’ drones), such evidence does not allow any conclusion in relation to the ‘GoPro’ trade mark’s recognition by the European Union consumers. Furthermore, the submitted documents of Exhibit 3 (list of search results for ‘GoPro’ products in Amazon.com.uk) only prove that the goods were offered for sale, whereas such fact alone cannot per se prove long standing and intensive use of the trade mark in question in the European Union market.  

As a consequence, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark in question has acquired an enhanced degree of distinctiveness or reputation.

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, despite the presence of some weak element in the mark as stated above in section c) of this decision which would be perceived as such only by some part of the English-speaking part of the public. 

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That assessment implies some interdependence between the relevant factors, and in particular a similarity between the signs and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the signs, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18, 19).

The contested goods in Class 9 are assumed to be identical to the opponent’s goods in Class 9 covered by the earlier trade mark in question. The earlier trade mark enjoys a normal degree of distinctiveness. The degree of attention of general’s public and the professionals may vary from average to high.

Taking into consideration, the principle of imperfect recollection, the conflicting signs are considered visually and aurally similar only to a low degree. Depending on the consumer’s perception of the signs (non- and English-speaking parts of the public) the signs either cannot be compared, or are considered conceptually not similar. Reference is made to the reasoning mentioned above in section c). It shows that the overall impression is influenced by the different visual and aural impact of the second part of the signs ‘-PRO’ (the earlier sign) and ‘-GOU’ (the contested sign). These differences cannot be outweighed by the identical beginning ‘GO’ of the signs. The plosive phonetics of ‘-PRO’ contrasts the resonant sound of the ‘-GOU’ syllable, producing a totally different rhythm of sonority of the conflicting signs.

Considering all the above, even assuming that the goods in Class 9 are identical, there is no likelihood of confusion on the part of the public.

The contested sign, even though it is figurative, focuses the entire consumer’s attention on the content of the verbal element ‘GoGou’, moreover as a result of the way it is represented (capitalization of the two letters ‘G’ in the sign) identification, dissection and verification of the two parts (‘Go’ and ‘Gou’) in the contested sign is much easier for consumers which normally rather do not tend to dissect the trade marks. As regards, the English-speaking consumers they will also distinguish between two parts of the earlier trade mark as described above. Even though, it is composed of one verbal element ‘GoPro’, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). Consequently for this part of the public, no likelihood of confusion is even more apparent. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• Figurative mark:
• European Union trade mark registration No 11 946 167,   , for the goods and services in Classes 9, 38, 41 and 42;

• Word marks:
• European Union trade mark registration No 15 179 799, ‘GOPRO’, for goods in Classes 9, 12 and 28;
• European Union trade mark registration No 6 750 368, ‘GOPRO’, for goods and services in Class 9, 40 and 41;

These European Union trade mark registrations for the word/figurative marks consist of or contain the same word element ‘GoPro’ as the earlier word mark, which has already been compared with the contested sign. Therefore, these earlier marks either are identical (all are word marks ‘GoPro’) to the earlier European Union trade mark registration No 12 621 901 which has already been compared, either are less similar as they contain further differing figurative elements, insofar the earlier trade mark is considered.

Moreover, they cover the narrower scope of the goods and services (the earlier trade mark already compared covers the broadest scope of goods and services in Classes 9, 35, 38, 41 and 42). Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. It should be mentioned again that the contested goods are assumed to be identical to the opponent’s goods covered by the European Union trade mark registration No 12 621 901; no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 12 621 901 for which the opponent claimed repute in the European Union in relation to all the goods and services for which it is registered.

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 European 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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

To determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. Since no considerable evidence in support of such factors needed to prove reputation claimed have been filled, it is concluded that the trade mark in question is not reputed in the European Union.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The same remarks are valid for the remaining earlier rights for which reputation has been claimed, namely European Union trade mark registrations No 11 946 167,   No 15 179 799 and No 6 750 368 for which the same evidence has been filled, and no other conclusion can be reached than the one presented above.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gregor SCHNEIDER

Birgit FILTENBORG

Francesca CANGERI SERRANO

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.