OPPOSITION No B 2 709 254

Wottoline, S.A., Puerto de Santamaria, 44, 28043 Madrid, Spain (opponent), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Jingyuan Dongli Technology Co., LTD., floor 4, B building, Gaoxinqi Plant, Liuxian 1st Road, No. 67 Zone, Xin'an Street, Ba'an District, Shenzhen, the People’s Republic of China (applicant), represented by A.Bre.Mar. S.r.l., Via Servais, 27, 10146 Torino, Italy (professional representative).

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

DECISION:

1.        Opposition No B 2 709 254 is partially upheld, namely for the following contested goods:

Class 9:        Smartphones; portable media players; cinematographic cameras; cameras [photography]; slide projectors; teaching projectors; slide projectors; transparency projection apparatus; projection screens; screens [photography]; projection apparatus.

2.        European Union trade mark application No 15 255 482 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 255 482 ‘WOWOTO’ (word), namely against all the goods and services in Classes 9 and 35. The opposition is based on European Union trade mark registration No 12 870 739 (figurative). 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 and services

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

Class 9: Electronic diaries, Loudspeakers, Amplifiers, Thermionic valves (radio), Headphones, Telephone receivers, Pocket calculators, Camcorders, Answering machines, Amusement apparatus adapted for use with television receivers only, Radiotelephony sets; Scanners (data processing equipment), Cases especially made for photographic apparatus and instruments, Cameras, Digital cameras, Underwater cameras, Printers for computers, Game programs, Cassette players, Compact disc players, Optical character readers, Computer memory cards, USB flash drives; Microphones, modems, monitors (hardware), computer peripherals, computers, light-emitting electronic pointers, laser pointers, apparatus for reproduction of sound, telephone apparatus, television sets, record players, videophones and small portable cassette players with headphones; Tablet computers and Electronics; Smartphones, Mobile phones, Solar batteries, Mobile telephone batteries, Battery chargers and MPEG audio layer-3 players; Spectacles, spectacle frames, spectacle cases.

Class 35: Sale via computer telecommunications networks of electronic organisers, speakers, amplifiers, audio systems (radio), headphones, telephone headphones; Pocketcalculators, video cameras, Telephone answering machines, entertainment apparatus created for use with television receivers only, Radiotelephony sets; Scanners (data processing equipment) (information technology), Cases especially made for photographic apparatus and instruments, Cameras [photography], Digital camera, Underwater cameras, Printers for use with computers, game programs, Cassette players, compact disc players, optical readers, Computer memory, USB memory devices; Microphones, modems, monitors (hardware), computer peripherals, computers, light-emitting electronic pointers, laser pointers, apparatus for reproduction of sound, telephone apparatus, television sets, record players, videophones and small portable cassette players with headphones, digital and electronic tablets; smart phones, mobile phones, Solar batteries, Batteries for mobile telephones, devices for charging batteries and Mp3 players; glasses, Eye glass and spectacle frames and Eyeglass cases; watches and jewellery.

The contested goods and services are the following:

Class 9: Smartphones; portable media players; cinematographic cameras; cameras [photography]; slide projectors; teaching projectors; slide projectors; transparency projection apparatus; projection screens; screens [photography]; projection apparatus.

Class 35: Advertising; publicity; advertising by mail order; on-line advertising on a computer network; procurement services for others [purchasing goods and services for other businesses]; import-export agencies; business inquiries; advisory services for business management; marketing; telemarketing services; sales promotion for others.

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 goods smartphones are identically contained in the list of goods of both marks.

The contested portable media players are a broad category, which includes inter alia the opponent’s cassette players and compact disc players. Since the Opposition Division may not ex officio dissect the broad category of the contested mark, these goods are considered identical to the mentioned goods of the opponent.

Cinematographic cameras and cameras [photography] of the contested mark are included in the broad category of cameras of the earlier mark and are hence identical.

The contested teaching projectors, slide projectors (contained twice in the list of goods) and projection apparatus and the earlier mark’s television sets are all audio-visual reproduction apparatus. These goods have the same purpose – reproduction of audio-visual content, they are often manufactured by the same companies and provided through the same distribution channels. Furthermore, they may target the same end-user and be in competition (e.g. projectors for home video vs. television sets). Therefore, they are considered highly similar.

The contested transparency projection apparatus are specific image reproduction apparatus. Therefore, they are similar to television sets of the earlier mark, since they coincide in purpose – reproduction of images, may share the same distribution channels and end-users.

Projection screens of the applicant’s mark are one of the parts (together with a projector) necessary for the projection of audio-visual content to occur. They are similar to television sets of the earlier mark, since both are audio-visual devices or accessories, which can coincide in end-user and distribution channels. Since projection screens are used together with projectors and in order for projection to occur the two elements – a projector and a projection screen are necessary, a relationship of competition between these goods is also considered to exist.

Screens [photography] of the contested mark and cameras of the earlier mark are both used in the process of creation of photographs. They both can share the same producer, have the same end-users (e.g. professional and amateur photographers) and distribution channels (e.g. specialised shops for photography equipment and accessories). Therefore these goods are considered similar.

Contested services in Class 35

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. Therefore, the fact that certain goods and/or services fall under the same class under the Nice Classification is not itself sufficient to consider the respective goods or services identical or similar. On the contrary, analysis on the bases of the criteria, mentioned above, should be performed.

The contested services in Class 35 comprise of advertising, marketing and business consultancy and administration-related services. The services of the earlier mark are sales services regarding different types of goods. Without providing any arguments in support, the opponent states that there is a close relation between its services in Class 35 and those of the contested mark. However, the nature and purpose of the services are fundamentally different – providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, assisting other companies to manage their business or helping them with the performance of business operations versus the bringing together, for the benefit of others, of goods, enabling customers to conveniently view and purchase those goods. These services are neither complementary nor in competition. They satisfy different needs, have distinct distribution channels and originate from different undertakings. None of the relevant factors to find similarity between the goods of Class 9 of the earlier mark and the services of Class 35 of the contested sign is present, either. Accordingly, all services of Class 35 of the contested sign, namely advertising; publicity; advertising by mail order; on-line advertising on a computer network; procurement services for others [purchasing goods and services for other businesses]; import-export agencies; business inquiries; advisory services for business management; marketing; telemarketing services; sales promotion for others are dissimilar to the goods and services 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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge and expertise. The degree of attention may vary from average to high depending on the specific goods, the price and how specialised the goods are, for example cinematographic cameras are specialised goods usually purchased for professional purposes and should therefore meet specific technical requirements.

3. The signs

	WOWOTO
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 contested mark is a word mark, comprising the single element ‘WOWOTO’. It is meaningless and therefore has a normal degree of distinctiveness.

The earlier mark comprises of the word element ‘iWotto” in standard font, as the second letter of the word combination, i.e. ‘W’ is in upper case, while the remaining letters are in lower case. It also features a dark circular shape with the letter ‘W’ in white, positioned in the centre of the circle.

When perceiving the sign as a whole, it is likely that a significant part of the relevant public perceives the letter ‘w’ in the circular shape before the ‘iWotto’ element as part of the word elements of the sign and reads and pronounces it as a word element. ‘W’ in the circular shape clearly stands out against the black background, its font is quite standard and the element is clearly seen as the letter ‘w’. Further, despite the fact that the font of ‘w’ and ‘iWotto’ is different, the lack of additional space between ‘w’ and ‘iWotto’ elements to visually separate them and the fact that they are visually positioned on the same line, has the effect that consumers will easily perceive and remember all letters together. Accordingly, a significant part of the consumers is likely to perceive the initial letter ‘w’ as part of the word elements of the signs, either as being part of the two-element combination ‘w iWoto’ or as part of the single word combination ‘wiWotto’. Irrespective of whether the word elements are seen as a single unit or two separate elements, they will not evoke any concept and therefore will have a normal degree of distinctiveness.

While it is not excluded that some consumers do not read and pronounce the letter ‘w’ in the circular shape, it is considered that these cases would be quite exceptional. For these cases, it is further possible that part of the respective consumers dissect the prefix ‘i’ from ‘Wotto’ and in view of part of the goods (e.g. smartphones), see it as alluding to internet and internet-related goods. ‘Wotto’ will be meaningless.

While noting the different possible scenarios of perception of the earlier mark, the Opposition Division finds it appropriate to focus its examination on the part of the public that will perceive the single letter ‘w’ as part of the word elements of the sign, since as said above, this is the way the majority of consumers are likely to see the mark. A review of the other possible perceptions will be performed only if considered necessary in view of the findings, reached on the basis of the examination of the first mentioned scenario.

As for an evaluation of whether the earlier mark has elements, which are more dominant than others, in view of the size and positioning of its components, it is considered that there will not be an element that is more eye-catching than the others.

Visually, the signs coincide in the letters ‘W*WOT(*)O’ in the same order. They differ in their second letter, which is ‘I’ in the earlier sign and ‘O’ in the contested one and in the presence of a double ‘T’ in the earlier sign, where the contested one has a single ‘T’. In addition, the signs differ in the font and the device element in the earlier mark. Given the significant number of coinciding letters in the same order and the fact that the word elements of the earlier sign are not highly stylised, it is considered that the visual differences, stemming mainly from elements which are not specifically eye-catching, such as the specific but not particularly imaginative font of the earlier mark or the simple device element in it, are not sufficient to outweigh the coincidences. Moreover, the fact that one of the signs contains a double ‘T’, while the other one – a single ‘T’ letter, is likely to be neglected by most of the consumers.

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

Aurally, irrespective of the different pronunciation rules in the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‘W*WOT(*)O’, present identically in both signs. Even if consumers perceive the letter ‘w’ in the circular shape of the contested sign as a separate element, it is quite unlikely that it is pronounced as a separate letter element, instead of linking it to the next word and pronouncing it together with it. The pronunciation differs in the second sound of the signs, which is ‘I’ in the earlier mark and ‘O’ in the contested one and possibly in the pronunciation of the double ‘T in the earlier mark. In this respect, it is to be noted that in part of the relevant territories, where doubled consonants are not typically used in the respective languages, it is more likely that consumers pronounce the double ‘T’ as a single ‘T’ letter.

Therefore, the signs are similar at least to an average degree.  

Conceptually, neither of the signs has a meaning for the relevant public. 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 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).

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).

The contested goods have been found to be identical and similar at varying degrees to those of the earlier mark, while the contested services – to be dissimilar. The relevant public is the general public and professionals, showing from average to high degree of attention depending on the goods at question. The earlier mark is of normal distinctiveness with respect to the goods at issue. Finally, the comparison of the signs has established that they are visually similar to an average degree and aurally similar at least to an average degree and that conceptual comparison is not possible to make.  

In the light of the above, and upon taking into account the principle of interdependence of the different relevant factors and that of imperfect recollection, the Opposition Division finds that there is a likelihood of confusion at least on the part of the public that will perceive and pronounce the letter ‘w’ in the circular shape of the earlier mark as a word element. Although it cannot be excluded that this element is perceived differently by part of the relevant public, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused. If a non-negligible part of the relevant public of the goods at issue may be confused as to the origin of the goods (as is the case at hand), this is sufficient (T-521/15, D, ECLI:EU:T:2017:536, § 69 and the case law cited). Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 870 739.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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.

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

Carlos MATEO PÉREZ

Teodora TSENOVA-PETROVA

Vít MAHELKA

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.