OPPOSITION No B 2 728 221

Medion AG, Am Zehnthof 77, 45307 Essen, Germany (opponent), represented by Becker & Müller, Turmstr. 22, 40878 Ratingen, Germany (professional representative)

a g a i n s t

Chengran Li, 26E, A1 Building, Cuijingju, Baomin Second Road, Xixiang, Bao'An District, Shenzhen, Guangdong, People’s Republic of China, (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD). Italy (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 728 221 is upheld for all the contested goods, namely 

Class 9:         Cell phone cases; Bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; Cell phone auxiliary cables; Stands for photographic apparatus; Computer peripheral apparatus; Headphones; Battery chargers; Blank USB flash drives; Stands adapted for mobile phones

2.        European Union trade mark application No 15 143 993 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 143 993  in Class 9, as listed below.

The opposition is based on European Union trade mark registration No 8 855 959, ‘MEDION’. 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.

1. The goods

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

Class 9: Magnetic encoders; data-processing apparatus; optical character readers; writing and/or reading implements (data processing); magnetic data carriers; handheld personal computers; optical data carriers; disc exchangers (for computers); scanners [data processing equipment]; memories for data processing equipment; central processing units (processors); compact discs (read-only memory); compact discs (audio-video); computers; Bags for computers, mobile phones and cameras etuis; computer programs, recorded; computer software (recorded); computer operating programs (recorded); computer peripheral devices; computer programs (downloadable); computer keyboards; printers for computer; wrist rests for use with computers; interfaces (for computers); laptops (computers); floppy disk drives;monitors (for computers); navigation apparatus for vehicles; notebooks (computers); computer games (Programs for -); electric make-up removing appliances; grids for batteries; chargers for electric batteries; plates for batteries; electric accumulators; electric alarm bells;junction boxes (electricity), electric indicators; electronic display boards; electric batteries; electric irons; theft prevention installations, electric; electric wires; electric cables; electric capacitors; electromagnetic coils; electronic publications (downloadable); electronic pens (visual display units); electric discharge tubes, other than for lighting; anti-interference devices (electricity);apparatus for the remote control of signals (electrodynamic); photocopiers (photographic, electrostatic, thermic); inductance coils (electricity);electric devices for attracting and killing insects; wire connectors (electricity); chargers for electric batteries; hair curlers, electrically heated; soldering apparatus, electric; electric soldering irons; solenoid valves [electromagnetic switches]; electric measuring devices; hair-curlers, electrically heated; electric locks; transmitters of electronic signals; electronic security tags for goods; socks, electrically heated; electric buzzers; electronic pocket translators; electronic diaries; electric door bells; electric door openers; electric door openers; electric monitoring apparatus; audio receivers and video receivers; tone arms for record players; head cleaning tapes [recording]; sound recording apparatus; visual recording equipment; tape-recorders; sound locating instruments; sound carriers; sound transmitting apparatus;apparatus for transmitting images; devices for wireless radio transmission;sending and receiving apparatus; sound amplifiers; sound-reproducing apparatus; apparatus for reproduction of images; music centres ; docking stations and docking systems for use with MP3, MP4, electronic music file players and digital music file players; amuesement apparatus adapted for use with television receivers; electronic equipment to receive and process satellite signals, namely, satellite receivers, satellite dishes and satellite remote controls, audio and video receivers; temperature indicators;telephones, mobile telephones, cordless telephones, videophones; cabinets for loudspeakers; letter scales; compact disc players; television apparatus;remote controls for electronic entertainment and/or communications apparatus, in particular wireless; telephone apparatus; motion picture cameras; film cutting apparatus; signal bells; altimeters; cassette players; compasses; headphones; laser pointers; microphones; mobile telephones; modems; navigational instruments; Electronic devices, namely, portable global positioning system (GPS) receivers, navigational devices and monitors for recreation and navigation purposes; lenses (optics); mouse pads; plotters; projection apparatus; projection screens; slide projectors; radios; car radios; world receiver; smartcards (cards with integrated circuits); electronic games adapted for use exclusively with a television receiver; walkie talkies; video cameras; video recorders; safety helmets for sports; electric alarm bells; scales; body fat scales; thermometers; vehicle batteries; empty sleeves for data carriers.

The contested goods are the following:

Class 9: Cell phone cases; Bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories; Cell phone auxiliary cables; Stands for photographic apparatus; Computer peripheral apparatus; Headphones; Battery chargers; Blank USB flash drives; Stands adapted for mobile phones.

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.

Headphones, battery chargers; computer peripheral apparatus are identically included in both lists (including synonyms).

Cell phone cases; bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories include as broader category, the opponent’s mobile phones etuis. Given that the Opposition Division cannot dissect ex officio the applicant’s broader category, the goods are considered identical.

Cell phone auxiliary cables are included in or overlap with the opponent’s broader category, electric cables. Therefore, they are identical.

Stands for photographic apparatus are complementary to the opponent’s visual recording equipment. They can coincide in manufacturers, distribution channels and target the same consumers. Therefore, they are similar.

Blank USB flash drives are included in or overlap with the opponent’s broader category, computer peripheral devices. The goods are therefore identical.

Stands adapted for mobile phones are complementary to the opponent’s mobile telephones. They can coincide in manufacturers, distribution channels and target the same consumers. Therefore, they are similar.

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 are directed at the public at large, as well as professionals and business customers with specific professional knowledge or expertise.

The degree of attention will vary depending on the professional knowledge and the price of the goods.

3. The signs

MEDION
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The conflicting signs are not meaningful in certain territories. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German and Spanish-speaking part of the public. The signs are meaningless for this public and their distinctiveness is normal.

Visually, the signs coincide in ‘ME**ION’ and differ in the letters ‘D’ and ‘ET’ in the middle of the signs. The signs also differ, to some extent, in the typeface of the contested mark, although its black font is quite standard.

Therefore, the signs are visually similar to a medium degree.  

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ME*ION’ and only differ in the sounds of the letters ‘D’ and ‘T’, and even those sounds are fairly close.  

Therefore, the signs are aurally highly similar.

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 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. 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

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.

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).

In the present case, the signs only differ in one or two letters, placed in their middle, and even those letters are phonetically close. The contested sign’s stylization does not depart from standard to the extent that it would be memorable on its own. None of the signs carry a concept which would help the public differentiate between them.

As a result, even the attentive consumers will readily assume that the identical or similar goods come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the German and Spanish-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.

 

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

Ioana MOISESCU

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.