OPPOSITION No B 2 755 125

Motorola Trademark Holdings, LLC, 222 W. Merchandise Mart Plaza, Suite 1800, Chicago, Illinois 60654, United States of America (opponent), represented by Brandstock Legal Rechtsanwaltsgesellschaft mbH, Rückertstr. 1, 80336 München, Germany (professional representative)

a g a i n s t

UAB "ELDES", Ukmergės G. 283B, 06313 Vilnius, Lituania (holder).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 755 125 is upheld for all the contested goods.

2.        International registration No 1 295 768 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods (in Class 9) of international registration designating the European Union No 1 295 768 (word mark: “MONIMOTO”). The opposition is based on European Union trade mark registration No 12 314 761 (word mark: “MOTO”). The opponent invoked Article 8(1)(b) and 8(5) 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 in Class 9 on which the opposition is based are, inter alia, the following:

Telephones, mobile phones, smartphones, tablet computer, computers, handheld and mobile digital electronic devices with wireless communication capabilities, radio telephones, pagers, two-way radios, radio transmitters, radio receivers, radio transceivers, electronic organizers, and related accessories for the foregoing goods, namely, headsets, headphones, microphones, speakers, carrying cases, protective cases and covers, protective or decorative skins, belt clips; electronic docking stations, stands, and mounts for mobile phones, tablets, handheld computers, and handheld and mobile digital electronic devices with wireless communication capabilities; cables and connectors, and keyboards; radio base stations, switches, routers, computers, computer software and programs used for transmission or reproducing or receiving of sound, images, video or data over a telecommunications network or system between terminals and for enhancing and facilitating use and access to computer networks and telephone networks; computer software for use in general purpose database management; computer e-commerce software to allow user to safely place orders and make payments in the field of electronic business transactions via a global computer network or telecommunications network; computer software for training and product support for computers and mobile phones in the field of communications; computer utility software for performing computer maintenance work; computer game software for mobile handsets; computer software and programs featuring music, movies, animation, electronic books, games in the field of general entertainment; computer software for the distribution of information and interactive multimedia content containing text, images, video and sound to users in the field of communications; computer software and programs for management and operation of wireless telecommunications devices; computer software for accessing, searching, indexing and retrieving information and data from global computer networks and global communication networks, and for browsing and navigating through web sites on said networks; computer software for sending and receiving short messages and electronic mail and for filtering non-text information from the data; analog and digital radio transceivers or receivers for data, voice, image and video communication, modems, global positioning units, batteries, battery chargers, power adapters, and antennas; cameras; digital cameras, digital video cameras; wearable computing peripherals; personal wearable and interchangeable electronic modules, namely personal identifiers for telephones, mobile phones, smartphones, tablets, computers, handheld and mobile digital electronic devices with wireless communication capabilities.

The contested goods in Class 9 are the following:

Alarms; anti-theft warning apparatus; bells (warning devices); buzzers; computer peripheral devices; data processing apparatus; detectors; diagnostic apparatus, not for medical purposes; distance recording apparatus; downloadable computer software applications; electric alarm bells; electric measuring devices; electric monitoring apparatus; electric theft prevention installations; global positioning system (GPS) apparatus; intercommunication apparatus; interfaces for computers; kilometer recorders for vehicles; measuring instruments; monitors (computer programs); navigational instruments; observation instruments; recorded computer programmes; recorded computer software; remote control apparatus; signal bells; speed checking apparatus for vehicles; speed indicators; transmitters of electronic signals; transmitters (telecommunication).

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

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

The contested Alarms; anti-theft warning apparatus; bells (warning devices); buzzers;

detectors; diagnostic apparatus, not for medical purposes; distance recording apparatus; electric alarm bells; electric measuring devices; electric monitoring apparatus; electric theft prevention installations; global positioning system (GPS) apparatus; interfaces for computers; kilometer recorders for vehicles; measuring instruments; navigational instruments; observation instruments; remote control apparatus; signal bells; speed checking apparatus for vehicles; speed indicators; transmitters of electronic signals; transmitters (telecommunication) are included in the broad category of, or overlap with, the opponent’s handheld and mobile digital electronic devices with wireless communication capabilities. Therefore, they are identical.

The contested computer peripheral devices include, as a broader category, the opponent’s wearable computing peripherals. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested data processing apparatus; intercommunication apparatus include, as broader categories, the opponent’s computers. 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 downloadable computer software applications; monitors (computer programs); recorded computer programmes; recorded computer software overlap with the opponent’s computer software for accessing, searching, indexing and retrieving information and data from global computer networks and global communication networks, and for browsing and navigating through web sites on said networks; computer software for sending and receiving short messages and electronic mail and for filtering non-text information from the data. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered between average and high, because they will not be purchased on a daily basis and will be selected carefully.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

MOTO	MONIMOTO
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘MOTO’ is not meaningful in certain territories, for example, in those countries where Spanish and Italian is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-speaking part of the public, such as the public in Hungary.

Both signs are word marks, which are protected in all different typefaces.

Visually and aurally, the earlier trade mark is completely included in the contested sign as its second part. They differ in the beginning of the contested sign, ‘MONI’. Therefore, the signs are visually and aurally similar to an average degree.

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

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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are identical.

Taking into account the visual and aural similarities between the signs, the fact that the earlier trade mark is completely included in the contested sign as its second part and the normal degree of distinctiveness of the earlier trade mark, there is, even taking into account a high degree of attention for a part of the public, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This applies all the more when the degree of attention of the public is only average.

There is a likelihood of confusion on the part of the Hungarian-speaking part of the public. 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.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. The same applies to the opponent’s argument as regards a family of marks.

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 ground of the opposition, namely Article 8(5) EUTMR.

The holder has not submitted any observations in reply. Therefore, its arguments cannot be examined.

The opposition is well founded under Article 8(1)(b) EUTMR.

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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 holder 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

Magnus ABRAMSSON

Peter QUAY

Claudia MARTINI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.