OPPOSITION No B 2 655 796

DAPE, Lda., Rua Professor Doutor Henrique de Barros, nº 28, 4705-319, Braga, Portugal (opponent), represented by Carlos Sousa Barbosa, Largo 5 de Outubro, n.º19, 1.º Drt, 4940-521, Paredes de Coura, Portugal (professional representative)

a g a i n s t

Shenzhen Daxpoo Electronics Co. Ltd., 4F-405, B Blk, Wenhao Business Bldg, No.1 A Blk, Xiaweiyuan, Xixiang Str, Baoan Dist, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by José Izquierdo Faces Iparraguirre, 42 – 3º Izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 655 796 is partially upheld, namely for the following contested goods:

Class 9:        Earphones; tablet PCs; smartphones; network routers; digital photo frames; portable media players; laptops [computers]; audio-video receivers; set-top boxes, wearable computer peripherals; video monitors.

Class 11:        Heating apparatus; gas stoves.

2.        European Union trade mark application No 14 786 263 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 786 263. The opposition is based on Portuguese trade mark registration No 484 396. The opponent invoked Article 8(1)(a) and (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:        Electric accumulators; solar batteries; photovoltaic cellules; electricity conducts; solar batteries.

Class 11:        Solar collectors (heating); heating (installation of-).

The contested goods are the following:

Class 8:        Beard clippers; manicure sets; razor cases; razor blades; shaving cases; fingernail polishers, electric or non-electric; razors, electric or non-electric; hair clippers for personal use, electric and non-electric; depilation appliances, electric and non-electric; manicure sets, electric; table cutlery [knives, forks and spoons]; spoons; knives; nail nippers; nail clippers, electric or non-electric; abrading instruments [hand instruments]; cutlery; table forks; nippers; scissors.

Class 9:        Cabinets for loudspeakers; earphones; tablet PCs; phone covers [specifically adapted]; smartphones; protective covers for smartphones; protective covers for tablet computers; network routers; digital photo frames; portable media players; mobile phone display screen protectors in the nature of films; cell phone cases; wearable computer peripherals; video monitors; stands adapted for mobile phones; laptops [computers]; audio-video receivers; set-top boxes.

Class 11:        Chinese lanterns; light-emitting diodes [LED] lighting apparatus; film stage lighting installations; headlights for automobiles; bicycle lights; light bulbs for directional signals for vehicles; vehicle headlights; searchlights; street lamps; diving lights; torches for lighting; lights for vehicles; heating apparatus; aquarium lights; luminous tubes for lighting; cycle lights; gas stoves; lamps; lighting apparatus and installations; lighting apparatus for vehicles.

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 8

The contested beard clippers; manicure sets; razor cases; razor blades; shaving cases; fingernail polishers, electric or non-electric; razors, electric or non-electric; hair clippers for personal use, electric and non-electric; depilation appliances, electric and non-electric; manicure sets, electric; table cutlery [knives, forks and spoons]; spoons; knives; nail nippers; nail clippers, electric or non-electric; abrading instruments [hand instruments]; cutlery; table forks; nippers; scissors are mainly hygienic and food preparation implements and apparatus. These goods in Class 8 and the opponent’s goods in Classes 9 and 11, which are basically apparatus and instruments for conducting, transforming and accumulating electricity, have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to, or in competition with, each other. Furthermore, even though they may be sold through the same distribution channels, they cannot be found on the same shelves or in the same sections of the relevant points of sale. Therefore, the contested goods are dissimilar to all the opponent’s goods.

Contested goods in Class 9

The contested earphones; tablet PCs; smartphones; network routers; digital photo frames; portable media players; laptops [computers]; audio-video receivers; set-top boxes, wearable computer peripherals; video monitors are related to the opponent’s electric accumulators and electricity conducts, which are used to power and connect electrical devices. These goods target the same public and are distributed through the same channels. Moreover, they are complementary. For instance, batteries are for storing electricity and are an indispensable part of, for example, a laptop. Therefore, the goods are similar.

The contested cabinets for loudspeakers; phone covers [specifically adapted]; stands adapted for mobile phones; protective covers for tablet computers; mobile phone display screen protectors in the nature of films; cell phone cases; protective covers for smartphones have the intended purpose of covering, and thus protecting, an item that is specified by the type of case. These goods are rudimentary and do not possess any internal or self-governing technology. In contrast, the opponent’s goods in Classes 9 and 11 are mainly apparatus and instruments for conducting, transforming and accumulating electricity. The conflicting goods do not have anything in common, as they differ in their natures, purposes, distribution channels, producers and methods of use. Therefore, the contested goods are dissimilar to all the opponent’s goods.

Contested goods in Class 11

        

The contested heating apparatus; gas stoves are included in the broad category of, or overlap with, the opponent’s heating (installation of-). Therefore, they are identical.

The contested Chinese lanterns; light-emitting diodes [LED] lighting apparatus; film stage lighting installations; headlights for automobiles; bicycle lights; light bulbs for directional signals for vehicles; vehicle headlights; searchlights; street lamps; diving lights; torches for lighting; lights for vehicles; aquarium lights; luminous tubes for lighting; cycle lights; lamps; lighting apparatus and installations; lighting apparatus for vehicles are mainly lighting or luminous implements, apparatus and systems. These goods in Class 11 and the opponent’s goods in Classes 9 and 11, which are basically apparatus and instruments for conducting, transforming and accumulating electricity, have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to, or in competition with, each other. Furthermore, even though they may be sold through the same distribution channels, they cannot be found on the same shelves or in the same sections of the relevant points of sale. Therefore, the contested goods are dissimilar to all the opponent’s goods or services.

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 a professional public with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, depending on the price and the level of technological sophistication of at least some of the goods, such as smartphones and laptops.

3. The signs

DAPE
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 earlier mark is the word mark ‘DAPE’. This word has no meaning for the relevant public and is, therefore, distinctive. Word marks are protected as such independently of the typeface used.

The contested sign is a figurative sign, containing the word ‘DAPENK’ in standard black upper case characters with the exception of the letter ‘D’, which is slightly stylised due to the three horizontal stripes at the bottom of the letter. This word has no meaning for the relevant public and is, therefore, distinctive. The first four letters of the word element are surrounded by an incomplete stylised black oval border with two openings; this will be perceived by the relevant public as a purely decorative element. When signs consist of both verbal and figurative components, 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). Therefore, the verbal element is more distinctive than the figurative element.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the string of letters ‘DAPE’, which forms the entirety of the earlier mark and the first four letters of the contested sign. However, they differ in the additional letters ‘NK’ at the end of the contested sign and in the figurative element (the oval), which is, as stated above, less distinctive than the verbal elements.

Furthermore, the fact that the first part of the contested sign is the same as the entire earlier mark is influential, as generally the first part is the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘DAPE’, present identically in both signs. The pronunciation differs in only the sound of the last two letters, ‛NK’, of the contested sign, which has no counterpart in the earlier mark. Since the reasoning set out in the visual comparison above regarding the position of the differing element also applies here, this difference (‘DAPENK’) has a limited impact.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical, partly similar (to a high degree) and partly dissimilar. They target both the public at large and professionals, and the degree of attention may vary from average to higher than average for the reasons given above in section b) of the present decision. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually similar to an average degree and aurally similar to a high degree because the earlier mark, ‘DAPE’, is included in its entirety as the first part of the element, ‘DAPENK’. The differences between the signs are confined to secondary elements and aspects: two additional letters placed at the end of the verbal element and a figurative element in the contested sign.

The additional figurative element (the oval) of the contested sign is deemed less distinctive than the verbal elements and its impact is very limited, since the public will more easily refer to the signs in question by their verbal elements than by describing their figurative elements.

Furthermore, the signs under comparison will not be associated with any meaning and will be perceived as fanciful words by the part of the relevant public under consideration. Therefore, there is no concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between them that arises from their visual and aural similarities.

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).

In addition, 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Moreover, the fact that the contested sign is depicted in a black stylised typeface and includes the figurative element is not relevant, since the earlier mark is a word mark, which is protected in all typefaces.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration.

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

The rest of the contested goods 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 goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michele M. BENEDETTI-ALOISI

Birgit FILTENBORG

María Clara IBAÑEZ FIORILLO

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.