OPPOSITION No B 2 762 469

Imax Corporation, 2525 Speakman Drive, Sheridan Science and Technology Park, Mississauga, Ontario L5K 1B1, Canada (opponent), represented by Dehns, St Bride's House, 10 Salisbury Square, London EC4Y 8JD, United Kingdom (professional representative)

a g a i n s t

Pimax Technology (Shanghai) Co., Ltd, Room 601-05, Building A Block 1, No. 3000 Longdong Avenue Hi-tech Park, Zhangjiang, Shanghai, People’s Republic of China (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).

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

DECISION:

1.        Opposition No B 2 762 469 is upheld for all the contested goods.

2.        European Union trade mark application No 15 356 447 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 15 356 447. The opposition is based on, inter alia, European Union trade mark registration No 175 091. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 175 091.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical and weighing apparatus and instruments; 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 and data processing equipment; developed motion picture films; video cassettes; audio and audio visual recordings; motion picture projectors; cameras; optical printers and film editing machines; motion picture screens; sound recording and sound reproducing apparatus and instruments, sound records, sound systems for use in motion picture theatres and other public performance theatres, halls and auditoriums; photographic films and photographic plates, all prepared for exhibitions, motion simulation entertainment system comprising computer-operated moveable seats and a related motion picture display; parts of all aforesaid goods.

Class 41: Education and entertainment; entertainment services provided through the medium of motion picture theatres; entertainment services provided through the medium of motion simulator rides; motion picture film editing services.

The contested goods are the following:

Class 9: Downloadable image files; laptop computers; portable media players; projection apparatus; audiovisual teaching apparatus; stereoscopes; video screens; eyeglasses; 3D spectacles; instruments containing eyepieces.

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.

The contested laptop computers; portable media players; projection apparatus; audiovisual teaching apparatus; video screens are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images in Class 9. Therefore, they are identical.

The contested stereoscopes; instruments containing eyepieces; eyeglasses, 3D spectacles are included in the broad category of the opponent’s optical apparatus and instruments in Class 9. Therefore, they are identical.

The contested downloadable image files are electronic data files containing images with different content, that as is the case with teaching materials or aids, are available online for the end consumer to download. They are similar to the opponent’s education service in Class 41. They can have the same end users and producers or service providers. Furthermore, they may be complementary. Indeed, teachers and students might need to download image files with the above content to use during a course or to have them uploaded to use them offline to do some homework for example.  

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 and services found to be identical and similar 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 and services, the frequency of purchase and their price.

3. The signs

IMAX
Earlier trade mark	Contested sign

The relevant territory is 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, part of the public (the English-speaking part) in the relevant territory might perceive the letter ‘I’ in all signs as a pronoun that refers to the speaker or writer, and the element ‘MAX’ as a name or an abbreviation for ‘maximum’. However, it is reasonable to assume that a significant part of the public, especially that part which is not familiar with English language, will not break the signs down into the above elements and will not attribute any meaning to them or to the signs as a whole. The assessment of the signs will continue in relation to only this part of the public, namely the non-English speaking part of the public. From the perspective of this part of the public, both verbal elements ‘IMAX’ and ‘pimax’ are distinctive to an average degree in the context of the goods and services in question.

Visually and aurally, the signs coincide in the letters/sounds ‘IMAX’, which form the entirety of the earlier mark. As the earlier mark is a word mark, it is irrelevant whether it is represented in upper or lower case. The marks differ in the contested sign’s first letter/sound ‘p’, which has no counterparts in the earlier mark. They slightly differ visually in their stylisation.

Therefore the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the part of the public in the relevant territory on which the present comparison is focused. 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.

In its submissions, the opponent claims that the earlier trade mark has a high degree of inherent distinctiveness given that ‘IMAX’ is an invented word which has no meaning in relation to the relevant goods and services. As regards this argument, first of all it should be noted that it is Office practice, that when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (order of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). In the present case, the opponent did not submit any further argumentation or evidence in order to prove its claim. Therefore, this claim must be set aside as unfounded.

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 and services in question from the perspective of the non-English-speaking part of 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 Opposition Division considers that the only difference between the signs existing in the letter ‘p’ of the contested sign, even though placed at the beginning, is not enough to outweigh the high visual and aural similarity between the signs and to exclude likelihood of confusion.

Moreover, 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).

Since the earlier mark is fully included in the contested sign, the relevant public is likely to confuse the trade marks at issue.

Considering all the above, there is a likelihood of confusion on the part of the non-English-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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 175 091. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right ‘IMAX’ referred to above 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).

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

Martin MITURA

Lucinda CARNEY

Vanessa PAGE

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.