OPPOSITION No B 2 724 998

Basf SE, Carl-Bosch-Str. 38, 67056 Ludwigshafen am Rhein, Germany (opponent), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative)

a g a i n s t

Shenzhen Paipai Science and Technology Co., Ltd., Room 1004, Honghu Mansion, Renmin North Road, Dongmen Street, Luohu District, Shenzhen, People´s Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais 27, 10146 Torino,Italy (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 998 is upheld for all the contested goods.

2.        European Union trade mark application No 14 985 162 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 985 162. The opposition is based on, inter alia, European trade mark registration No 5 458 518 and the company name “BASF” used in the course of trade in Germany. The opponent invoked Articles 8(1)(b), 8(5), 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.

1. The goods

Among others, the goods on which the opposition is based are the following:

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (inspection), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.

The contested goods are the following:

Class 9:        Electric power supply units for mobile phones; data processing apparatus; computer bags; cabinets for loudspeakers; headphones; carrying cases for cell phones; stands adapted for mobile phones; cases especially made for photographic apparatus and instruments.

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.

Electric power supply units for mobile phones are identical to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity as they are included in the general category.

Data processing apparatus appear on both lists (though with a different wording) and are, therefore, identical.

Computer bags are accessories made for computers, which are goods protected by the earlier mark. The goods under comparison are often manufactured under the control of the same companies and are distributed through the same channels. Therefore, the goods are similar.  

The contested headphones are identical to the earlier apparatus for reproduction of sounds as the former are included in the latter.

Cabinets for loudspeakers, carrying cases for cell phones and stands adapted for mobile phones are accessories for apparatus for recording, transmission or reproduction of sound. The goods under comparison are often manufactured under the control of the same entities and distributed through the same channels. Therefore, the goods are similar. 

Cases especially made for photographic apparatus and instruments are accessories for the earlier photographic apparatus and instruments. The goods under comparison are often manufactured under the control of the same entities and distributed through the same channels. Therefore, the goods 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.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

BASF	OATSBASF
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 marks have no dominant elements, as they are word marks, and “BASF” as well as “OATS” are distinctive for the goods at issue as they mean nothing in relation to them nor refer to any of their characteristics.

Visually and aurally, the signs are similar to the extent that they coincide in the letters “BASF”, which form the only element of the earlier trade mark and are fully reproduced in the contested sign, following the verbal expression “OATS”, which has no counterpart in the earlier trade mark and forms the point of divergence between the signs. In account of these issues, the marks are visually and aurally similar to an average degree.

Conceptually, “OATS” means, in English, a cereal plant and the grain from this plant often used as food, in the plural form; in the rest of the relevant languages the term is meaningless. “BASF” is meaningless in all the relevant languages. In English the marks are not conceptually similar as “OATS” has a meaning whereas “BASF” does not and, for the consumers who do not understand either “BASF” or “OATS” the conceptual aspect does not influence the assessment of the similarity of the signs.

As seen above, the signs under comparison are similar to the extent that they share “BASF”.  

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 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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,  § 22 et seq.).

For the purposes of the global assessment, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

The fact that for the English-speaking consumers the marks are not conceptually similar in account of “OATS” having a meaning has to be put in the context of the marks having an average degree of similarity due to the presence in both of the term “BASF”. For the rest of the public, for whom the signs are still visually and aurally similar to an average degree, the signs do not bear concepts which can help to differentiate between them.

Consequently, in account of the similarities of the signs, the general public, with (on the whole) an average degree of attention towards the goods might assume, in the presence of identical and similar goods, that they originate from the same company or companies with economic ties. Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 5 458 518 and 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/their extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European trade mark registration No 5 458 518 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and 8 (5) EUTMR.

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

Michaela SIMANDLOVA

María Belén IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

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.