OPPOSITION No B 2 592 213

Imtron GmbH, Wankelstraße 5, 85046 Ingolstadt, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Iris Venture Holding BV, Orlyplein 10, 24ème étage, 1043DP Amsterdam, the Netherlands (applicant), represented by Lext Avocats Aarpi, 12 Avenue Bollée, 72000 Le Mans, France (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 592 213 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 517 023. The opposition is based on European Union trade mark registration No 9 092 933. 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: Apparatus for recording, transmission or reproduction of sound and/or images and/or electronically processed data, and accessories therefor, in particular television sets, projectors, beamers, radios, Internet radios, clock radios, video recorders, DVD players, DVD recorders, players for optical storage media, CD recorders, dictation machines, analogue and digital tape recorders and cassette recorders, analogue and digital record players, stereo apparatus, portable stereo apparatus, portable video apparatus, portable CD players, apparatus for the cable or wireless transmission of sound and/or images and/or electronically recorded data; Amplifiers, receivers, loudspeakers, CD players, including all for fitting in motor vehicles; Sending and receiving installations and parts therefor, for the transmission of sound or images, in particular for satellite reception, including aerials, parabolic aerials, decoders, modems, converters, microwave converters, amplifiers, aerial boosters, waveguides, connector bushings for aerials, broadband communication installations, aerial cables; Sockets, plugs and other electrical connections; Portable answering machines; Portable bluetooth adapters; Portable printers; Portable electronic databases; Portable electronic translators; Portable radiotelephony sets; Portable card readers; Portable electronic book readers; Portable personal computers, including tablet PCs; Portable scanners; Hand-held calculators; UMTS cards and UMTS sticks; USB sticks; Portable video games consoles; Portable weather stations; MP3 players; MP4 players; Bags and loudspeakers for portable CD players, MP3 players and MP4 players; Navigation apparatus and accessories therefor, in particular aerials, chargers, batteries, mounts and bags; Telephony apparatus; Portable telephone apparatus; Memory programmable control systems for telecommunications; Accessories for telephone apparatus and telephone installations, in particular aerials, chargers, batteries, hands-free devices, holders, fascias and bags; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, in particular chargers for electric batteries, batteries and electric accumulators; Photographic, cinematographic and optical apparatus and instruments, in particular photographic apparatus, lenses, binoculars, cameras, video cameras, camcorders, film cameras, digital cameras, apparatus for editing films and photographs, flash apparatus, flashlights, projection screens, exposed films, slide mounts, tripods, camera bags, memory cards, photographic scanners, photographic printers, batteries for photographic, cinematographic and optical apparatus, chargers for photographic, cinematographic and optical apparatus, memory cards for photographic, cinematographic and optical apparatus, batteries for photographic, cinematographic and optical apparatus, connector cables and plugs for photographic, cinematographic and optical apparatus, bags for photographic, cinematographic and optical apparatus, digital picture frames, fax machines; Computer peripheral devices and accessories therefor, in particular keyboards, computer mice, trackballs, joysticks, gamepads, computer steering wheels, boards, memory boards, graphic boards, television cards for computers, sound cards, webcams, CD burners, DVD burners, modems, connector cables, plug connectors, USB cables, loudspeakers for computers, hard discs, disc drives, network cards; Notebook computers and accessories therefor, in particular chargers, batteries and bags; Recorded and unrecorded data carriers for the storage of information, data, images and sound (included in class 9), in particular CDs, DVDs, optical storage media, memory cards, audio cassettes, video cassettes, computer cassettes, magnetic tapes, magnetic data carriers, mini-discs; Flat irons, electric apparatus for sealing plastics (packaging), baby monitors, electric apparatus for commutation and distribution consoles; Magnetic cards; Encoded cards; Scales; Headphones; Head sets; Microphones; Alarm apparatus; Remote control; Cables; Power surge protection equipment; Navigation apparatus for installing in vehicles.

The contested goods are the following:

Class 9: Apparatus for transmission, reception, recording and reproduction of sound, data and images; Radiotelephones; Pocket terminals (smartphones); Digital cameras; Cam cameras; Multimedia tablets including those with touchscreens; MP3/MP4 players and players for other digital audio formats; Applications (computer software) for mobile telephones, multimedia tablets and pocket terminals (smartphones); Audio headsets for mobile telephones, multimedia tablets and pocket terminals (smartphones); Cases, Covers and cases for portable telephones, Multimedia pads, Pocket terminals (smartphones); Cases for mobile telephones, multimedia tablets and pocket terminals (smartphones), of leather and imitations of leather; Covers for mobile telephones, multimedia tablets and pocket terminals (smartphones), of textile; Protective films for the screens of mobile telephones, multimedia tablets and pocket terminals (smartphones); Styluses for mobile telephones, multimedia tablets and pocket terminals (smartphones); Holders (with adapters for motor vehicles) for mobile telephones, multimedia tablets and pocket terminals (smartphones); Hands-free kits for mobile telephones, multimedia tablets and pocket terminals (smartphones); Batteries and cells; Rechargeable cells; Rechargeable batteries; Apparatus for charging of batteries and accumulators; Battery chargers for use in cars; Chargers for electric batteries; wired; Data communications cables; Apparatus for connecting and charging pocket electronic digital mobile devices; Parts for all the aforesaid goods.

Most 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 directed at the public at large and at business customers with specific professional knowledge or expertise.

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

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).

Both signs are figurative. While it is clear that the earlier sign contains the word ‘OK’, the graphical representation of the contested sign lends itself to various interpretations. Assuming that the contested sign is perceived as a highly stylised word ‘OK’, this word is the only element that the signs have in common. This assumption represents the best case scenario for the opponent and will be examined first.

The signs have no elements that could be considered clearly more dominant than other elements.

The word ‘OK’ is commonly used to express approval, agreement or that something is ‘all right’. It may be perceived as a laudatory indication that the relevant goods are of good quality. Furthermore, as demonstrated by the applicant, the word ‘OK’, as such, often appears on the user interface of various goods belonging to Class 9 (e.g. remote control devices, mobile phones) to indicate the button used for approval of the chosen action. Therefore, the distinctiveness of the word ‘OK’ is limited in relation to the relevant goods. The figurative elements put their stamp on the overall impression produced by the marks.

The above finding is not called into question by the various registrations of the word ‘OK’ referred to by the opponent as the registration of the mark does not automatically mean that it has a normal degree of distinctiveness.

The full stop following the letters ‘OK’ in the earlier mark, being a punctuation mark, has a different function than an indication of origin. Finally, as to the figurative elements of the earlier mark, they are not particularly elaborate.  

Furthermore, each of the signs in dispute has two letters. Both are, consequently, short marks. The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression.

The argument that the verbal component of the sign usually has a stronger impact on the consumers than the figurative element cannot hold in all cases as the degree of distinctiveness of the verbal elements and appearances of the signs also need to be considered. In this respect, the Opposition Division notes that, in the present case, the figurative elements of the marks are clearly more relevant from the point of view of trade mark protection and these elements are different. Furthermore, the graphical representation of the contested sign is more sophisticated than that of the earlier mark.

This means that visually, the signs are similar at best to a low degree since the coincidence in the element with limited distinctiveness cannot be given much weight in the establishment of the legally relevant similarity and the signs differ significantly in their graphical representation and the additional dot of the earlier mark.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs will be pronounced identically.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs convey the same concept. The additional elements do not introduce any particular concept capable of altering the conceptual perception 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.

Before the end of the time limit for substantiation the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. In its observations filed on 10/03/2017, the opponent claimed that it successfully established its mark in the market worldwide and attached screenshots of the opponent’s website http://de.ok-online.com/ in support of this claim. This evidence cannot be taken into account as evidence of enhanced distinctiveness because it was received after the date of 21/06/2016 set by the Office for the opponent to submit evidence of the existence, validity and scope of protection of its mark. For the sake of completeness, the Opposition Division notes that this evidence would not be sufficient to prove an enhanced distinctiveness of the earlier mark. Apart from the fact that such evidence has less probative value than evidence originating from independent sources, the screenshots of the opponent’s website only show the sign and the goods. They do not give information about the recognition of the mark by the relevant public.

Likewise, the argument that the opponent belongs to the group of well-known retail brands and evidence filed in this respect are irrelevant as the examination concerns the marks.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark rests fundamentally on its graphical representation which, in addition, is not very elaborate. Therefore, the degree of distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. Global assessment, other arguments and conclusion

The signs are pronounced in the same way and refer to the same concept. However, in both respects, the Opposition Division must attach the appropriate weight to each of these aspects and the impression that they are capable of producing on the consumers.

As explained above, in the present case, due to the limited distinctiveness of the verbal element that the signs have in common, the figurative elements have a stronger impact on the consumers. Taking into account that the signs are short, the differences in their graphical representations will be easily spotted.

 

With respect to aural identity, while it cannot be overlooked completely, its capacity to contribute to confusion on the part of the consumer is reduced in the view of the Opposition Division. The fact that two marks coincide in the sound of a two-letter verbal element is not considered to leave much of an impression on consumers, especially considering that this verbal element refers to the characteristics of the goods in question and that these goods are not normally ordered in a way that requires particular prominence to be given to the aural identity.

Likewise, although the signs carry the same concept, the impact of this coincidence is reduced because of the limited distinctiveness of the verbal element ‘OK’.

The marks in dispute are figurative marks, which is to say that both the opponent and the applicant opted to apply for a particular visual depiction of the word ‘OK’. Given the reduced impact of the aural and conceptual coincidence, the assessment of likelihood of confusion must also take into account, to a significant extent, the visual impression that arises from the particular way in which the marks are represented. In this regard, it must be noted that, the aural and conceptual coincidence in a short element with limited distinctiveness may be overridden by sufficient visual differences between the signs.

Visually, there are clear differences between the marks, as described in detail above in section b). In particular, the depiction of the contested sign is more sophisticated.

Account is also taken of the fact that the inherent distinctiveness of the earlier mark is low.

Consequently, in the present case a likelihood of confusion can be safely excluded because, even if the word ‘OK’ is perceived in the contested sign, it is stylised in a sufficiently different manner, so that the different overall graphical representation of the signs eclipses the common verbal element.

The cases referred to by the opponent concern other signs and the circumstances of these cases do not appear to be comparable to those of the present case. In each of these cases, various relevant factors are taken into consideration, including the degree of distinctiveness of the coinciding element in relation to the relevant goods or services and the graphical representation of letters. The mere fact that conflicting signs may resemble one another in certain aspects is in itself, insufficient as, depending on the circumstances, such coincidences may lead to different outcomes. This also applies to the two previous first instance decisions of EUIPO quoted by the opponent and concerning the marks coinciding in the word ‘OK’. Additionally, it is noted that one of these two cases concerns an earlier Portuguese mark which, unlike the signs in the present case, is registered in relation to services. The other case concerns an opposition rejected on the basis of Article 8(1)(b) EUTMR because of dissimilarity of goods and services and on the basis of Article 8(5) EUTMR because it was considered that the public would not establish a link between the signs.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public which will not identify the word ‘OK’ in the contested sign. This is because that part of the public will not perceive any similar element between the signs here at issue.

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

Alexandra APOSTOLAKIS

Justyna GBYL

Martina GALLE

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.