OPPOSITION No B 2 756 081

DSG Retail Limited, 1 Portal Way, London W3 6RS, United Kingdom (opponent), represented by Fieldfisher LLP, Riverbank House, 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative)

a g a i n s t

AndroVideo Inc., 2F.-4, No. 17, Ln. 91, Sec. 1, Neihu Rd., Neihu Dist., Taipei City 114, Taiwan (applicant), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cedex 03, France (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 756 081 is partially upheld, namely for the following contested goods and services:

Class 9:                Floppy disc drives recorded with computer programs for use in downloading digital recordings; computer discs recorded with computer programs for use in downloading digital recordings; computer; computer cases; floppy discs recorded with computer programs for use in downloading digital recordings; computer discs containing computer programs for use in downloading digital recordings; home computers; computer notebooks; computer programs for use in downloading digital recordings; computer software for use in downloading digital recordings; flash memory cards and expansion modules; blank portable hard discs for computers; computer hardware; personal computers; identification devices namely encoded electronic chip cards for use in identifying particular users of computers; security card scanners; fingerprint recognition devices namely scanners; computer burners namely DVD burners; digital video disc storage namely digital video recorders; optical character recognition apparatus and software; computer disc burners; blank compact discs; interface cards for computer use; cameras.

Class 42: Computer software design; computer software renovation; computer software maintenance; computer software renting; computer software design and consultation; computer system design; computer software installation; computer program duplication; computer program planning; consultancy in the field of computer hardware.

2.        European Union trade mark application No 15 407 752 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 407 752. The opposition is based on, inter alia, European Union trade mark registration No 1 529 718. The opponent invoked Article 8(1)(b), 8(5) and 8(4) 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 1 529 718.

1. The goods and services

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

Class 9: Computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles.

The contested goods and services are the following:

Class 9: Floppy disc drives recorded with computer programs for use in downloading digital recordings; computer discs recorded with computer programs for use in downloading digital recordings; computer; computer cases; floppy discs recorded with computer programs for use in downloading digital recordings; computer discs containing computer programs for use in downloading digital recordings; home computers; computer notebooks; computer programs for use in downloading digital recordings; computer software for use in downloading digital recordings; flash memory cards and expansion modules; blank portable hard discs for computers; computer hardware; personal computers; identification devices namely encoded electronic chip cards for use in identifying particular users of computers; security card scanners; fingerprint recognition devices namely scanners; computer burners namely DVD burners; digital video disc storage namely digital video recorders; optical character recognition apparatus and software; computer disc burners; blank compact discs; interface cards for computer use; cameras.

Class 42: Computer software design; computer software renovation; computer software maintenance; computer software renting; computer software design and consultation; computer system design; computer software installation; computer program duplication; computer program planning; consultancy in the field of computer hardware; surveillance system planning.

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

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

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

The contested floppy disc drives recorded with computer programs for use in downloading digital recordings; computer hardware; security card scanners; fingerprint recognition devices namely scanners; computer burners namely DVD burners; optical character recognition apparatus; computer disc burners; interface cards for computer use are included as the broad category of, or overlap with, the opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles of the earlier mark, and thus these goods are identical.

The contested computer includes, as a broader category, or overlaps with, the opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested home computers; computer notebooks; personal computers overlap with the opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles in that there are home computers and computer notebooks that are not for use in the control or regularisation of installations and industrial processes, machines and vehicles. Therefore, they are identical.

The contested computer discs recorded with computer programs for use in downloading digital recordings; floppy discs recorded with computer programs for use in downloading digital recordings; computer discs containing computer programs for use in downloading digital recordings; flash memory cards and expansion modules; blank portable hard discs for computers; digital video disc storage namely digital video recorders; blank compact discs are various types of data storage media. They are similar to a high degree to the opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles. These goods are complementary, they have the same producers and distribution channels, and they target the same consumers.

The contested computer cases are similar to the opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles. These goods are complementary. Furthermore, they have the same distribution channels, producers and relevant public.

The contested computer programs for use in downloading digital recordings; computer software for use in downloading digital recordings; optical character recognition software and the opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles are similar. Companies that manufacture computers also manufacture software and computer programs; these goods have the same distribution channels and target the same professional public (e.g. professionals in in banking and finance, education, medicine, business and entertainment/recreation) and/or the general public. Moreover, they are complementary.

The contested identification devices namely encoded electronic chip cards for use in identifying particular users of computers are similar to the opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles. These goods are complementary, and their producers are the same. Moreover, they are sold in the same outlets.

The contested cameras are similar to the opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles. These goods have the same producers and distribution channels. Furthermore, they target the same relevant public.

Contested services in Class 42

The opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles in Class 9 are similar to the contested computer software design; computer software renovation; computer software maintenance; computer software renting; computer software design and consultation; computer software installation, as they can have the same end users and distribution channels. Furthermore, they are complementary (27/09/2016, T-449/15, luvo, EU:T:2016:544, § 26, 29, 42-44, 48).

Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs and systems to operate.

Therefore, the contested computer system design; computer program duplication; computer program planning are closely linked to the opponent’s computers, except computers for use in the control or regularisation of installations and industrial processes, machines and of vehicles in Class 9. This is because, in the field of computer science, producers of computers will also commonly provide computer-related services (as a means of keeping the system updated, for example). Consequently, although the nature of the goods and services is not the same, both the end users and the producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

Similar reasoning applies in relation to the opponent’s consultancy in the field of computer hardware. Even if these services are of a different nature from the opponent’s goods in Class 9, these goods and services are complementary and can have the same end users and producers/providers. Therefore, they are similar.

Finally, the contested surveillance system planning is dissimilar to the opponent’s goods in Class 9. The contested surveillance system planning consists of deciding how a surveillance system should work. The goods and services at issue do not have the same nature, method of use or purpose. They are not complementary or in competition. The goods and services do not have the same producers/providers and their distribution channels are different.

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 and services found to be identical or similar to various degrees are directed at the public at large, as well at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price and the specialised nature of the purchased goods and services.

3. The signs

ADVENT
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.

In the present case, part of the French-speaking public will pronounce the signs ‘advɑ̃’.

Considering that these words do not exist in French, the way in which these words will be pronounced has to be deduced by considering how similar words are pronounced. In the present case, the pronunciation of the letters ‘ent’ and ‘an’ will be identical to their pronunciation in the following French words: vent (wind), argent (money), content (happy), sent (smell), plan (plan), trimaran (trimaran), élan (momentum), cran (notch), varan (lizard), etc.

Therefore, in the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, for which the pronunciation of ‘advan’ and ‘advent’ will be identical.

The contested sign is a figurative mark containing verbal and figurative elements. In such cases, 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; decisions of 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The contested sign contains, on the left, a figurative element consisting of a diamond shape containing a stylised letter ‘a’, which may be perceived as only a fanciful element. On the right is the word ‘advan’ in lower case letters. In addition, there is a black triangle within the first letter ‘a’.

The inherent distinctiveness of the element ‘ADVAN’ is average in relation to the goods and services in question.

The figurative letter ‘a’ will tend to be ignored by the relevant public, as it will be perceived as a figurative version of the first letter of the verbal element ‘advan’. Therefore, it has less significance than the word ‘advan’.

Neither of the signs has any element that could be considered clearly more dominant than the others.

The earlier mark is the word mark ‘ADVENT’. This word is meaningless for the part of the public under consideration. It has an average degree of distinctiveness in relation to the goods at issue.

Visually, the signs coincide in the letters ‘ADV’ and in their fifth letter, ‘N’. They differ in their fourth letters, ‘A’ in the contested mark and ‘E’ in the earlier mark, in the additional sixth letter in the earlier mark, ‘T’, and in the additional figurative elements in the contested sign, which, however, will have a limited impact on the public, as explained above.

The fact that the contested sign is depicted in a lower case typeface is irrelevant, because the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 42). Therefore, the earlier mark could also be written in lower case letters.

It should be noted that 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.

Given the above, and taking into account the degree of significance of each component, the signs are visually similar to a low degree.

Aurally, for the reasons explained above, the elements ‘advan’ and ‘advent’ are aurally identical for the public under consideration.

Given that the figurative letter ‘a’ of the contested mark will not be pronounced, as it coincides with the first letter of the verbal element of the mark (29/05/2017, R 2015/2016-4, A&E AEVOGUE / VOGUE, § 25), the signs are aurally identical.

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 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

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, the conflicting signs are visually similar to a low degree and aurally identical. The conceptual aspect has no influence on the assessment of the similarity of the signs. The contested goods and services are partly identical, partly similar to various degrees and partly dissimilar.

The fact that the signs are aurally identical for the public under consideration is a decisive factor. Although the marks are visually similar only to a low degree, the fact remains that the aural aspect is also relevant to the assessment of likelihood of confusion. Not only may the importance of certain visual dissimilarities be diminished by 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, but, in addition, consumers may be prompted to choose goods and services from the categories in question in response to a television advertisement, for example, or because they have heard them being spoken about, in which case they might retain an aural impression of the mark in question as well as a visual impression.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 1 529 718. 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 and services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

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

• European Union trade mark registration No 11 041 282 for the word mark ‘ADVENT STORE’, registered for goods in Class 9.
• European Union trade mark registration No 11 041 266 for the word mark ‘ADVENT VEGA’, registered for goods in Class 9.

Since these marks cover a similar scope of goods (computers, netbooks and laptops), the outcome cannot be different with respect to services for which the opposition has already been rejected, because these goods are also dissimilar to the contested surveillance system planning in Class 42, for the same reasons as those indicated in section a) of this decision. These goods and services do not have the same nature, purpose or method of use. They are not in competition and they are not provided or manufactured by the same producers. Therefore, no likelihood of confusion exists with respect to those services.

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 marks.

On 26/08/2016 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 31/12/2016.

The opponent did not submit any evidence concerning the reputation of the trade marks 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 these grounds are concerned.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 26/08/2016 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 31/12/2016.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based, namely ‘ADVENT’.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Monika CISZEWSKA

Patricia LOPEZ FERNANDEZ DE CORRES

Gueorgui IVANOV

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.