OPPOSITION No B 2 654 567

Intenso GmbH, Gutenbergstraße 2, 49377 Vechta, Germany (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative)

a g a i n s t

DC Comics (partnership), 2900 West Alameda Avenue, Burbank, California 91505, United States of America (applicant), represented by Simmons & Simmons LLP, CityPoint, One Ropemaker Street, London EC2Y 9SS, United Kingdom (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 654 567 is partly upheld, namely for the following    contested goods in Class 9:

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting or accumulating electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; audio video discs, and digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation; stereo headphones; cordless telephones; CD players; CD ROM computer game discs; telephone and/or radio pagers; compact disc players; radios; mouse pads; downloadable software for use in playing online computer games, downloadable computer game software; Computer game software for use on mobile and cellular phones; video and computer game programs; video game cartridges; computer and video games which are designed for hardware platforms, namely, game consoles and personal computers; CD-ROM and digital versatile computer game discs and computer programs, namely, software linking digitized video and audio media to a global computer information network; downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas; computer software, namely, computer software for streaming audio-visual media content via the Internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with multimedia and interactive functions, video search and annotation software, content protection software, database management software, database synchronization software; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment-related audio, video, text and multi-media content; computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the Internet; downloadable computer software for streaming audio-visual media content via the Internet; downloadable computer software for streaming and storing audio-visual media content; downloadable publications in the nature of books featuring characters from animated, action adventure, comedy and/or drama features, comic books, children's books, strategy guides, magazines featuring characters from animated, action adventure, comedy and/or drama features, coloring books, children's activity books and magazines in the field of entertainment; cellular telephone accessories, namely hands-free accessories, cellular telephone covers and cellular telephone face covers; encoded magnetic cards, namely, phone cards, credit cards, cash cards, debit cards and magnetic key cards.

2.        European Union trade mark application No 14 756 639 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 some of the goods of European Union trade mark application No 14 756 639 (figurative mark:
“”), namely against some of the goods in Class 9. The opposition is based on international trade mark registration No 1 257 258 designating the European Union (word mark: “FLASH LINE”). 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 in Class 9 on which the opposition is based are the following:

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; CDs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

The contested goods in Class 9 are the following:

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), 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; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; Motion picture films featuring comedy, drama, action, adventure and/or animation, and motion picture films for broadcast on television featuring comedy, drama, action, adventure and/or animation; audio video discs, and digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation; stereo headphones; batteries; cordless telephones; CD players; CD ROM computer game discs; telephone and/or radio pagers; compact disc players; radios; mouse pads; downloadable software for use in playing online computer games, downloadable computer game software; Computer game software for use on mobile and cellular phones; video and computer game programs; video game cartridges; computer and video games which are designed for hardware platforms, namely, game consoles and personal computers; CD-ROM and digital versatile computer game discs and computer programs, namely, software linking digitized video and audio media to a global computer information network; downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas; computer software, namely, computer software for streaming audio-visual media content via the Internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with multimedia and interactive functions, video search and annotation software, content protection software, database management software, database synchronization software; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment-related audio, video, text and multi-media content; computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the Internet; downloadable computer software for streaming audio-visual media content via the Internet; downloadable computer software for streaming and storing audio-visual media content; downloadable publications in the nature of books featuring characters from animated, action adventure, comedy and/or drama features, comic books, children's books, strategy guides, magazines featuring characters from animated, action adventure, comedy and/or drama features, coloring books, children's activity books and magazines in the field of entertainment; cellular telephone accessories, namely hands-free accessories, cellular telephone covers and cellular telephone face covers; encoded magnetic cards, namely, phone cards, credit cards, cash cards, debit cards and magnetic key cards.

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 applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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.

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus are identically contained in both lists of goods.

The contested measuring apparatus and instruments overlap with the opponent’s weighing apparatus and instruments. Therefore, they are identical.

The contested signalling apparatus and instruments overlap with the opponent’s nautical apparatus and instruments. Therefore, they are identical.

The contested compact discs; audio video discs, and digital versatile discs featuring music, comedy, drama, action, adventure, and/or animation; CD ROM computer game discs; CD-ROM and digital versatile computer game discs are included in the broad category of the opponent’s digital recording media. Therefore, they are identical.

The contested cordless telephones; telephone and/or radio pagers are included in the broad category of the opponent’s apparatus for transmission of sound. Therefore, they are identical.

The contested CD players; compact disc players; radios are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound. Therefore, they are identical.

The contested downloadable software for use in playing online computer games, downloadable computer game software; Computer game software for use on mobile and cellular phones; video and computer game programs; video game cartridges; computer and video games which are designed for hardware platforms, namely, game consoles and personal computers and computer programs, namely, software linking digitized video and audio media to a global computer information network; downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas; computer software, namely, computer software for streaming audio-visual media content via the Internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with multimedia and interactive functions, video search and annotation software, content protection software, database management software, database synchronization software; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment-related audio, video, text and multi-media content; computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the Internet; downloadable computer software for streaming audio-visual media content via the Internet; downloadable computer software for streaming and storing audio-visual media content; downloadable publications in the nature of books featuring characters from animated, action adventure, comedy and/or drama features, comic books, children's books, strategy guides, magazines featuring characters from animated, action adventure, comedy and/or drama features, coloring books, children's activity books and magazines in the field of entertainment are included in the broad category of, or overlap with, the opponent’s computer software. Therefore, they are identical.

The contested encoded magnetic cards, namely, phone cards, credit cards, cash cards, debit cards and magnetic key cards are included in the broad category of the opponent’s magnetic data carriers. Therefore, they are identical.

The contested stereo headphones have the same distribution channels, public and producers as the opponent´s apparatus for recording of sound. Therefore, they are similar.

The contested checking (supervision) apparatus and instruments are similar to the opponent’s weighing apparatus and instruments, as they have the same purpose. They can also have the same producers, end users and distribution channels.

The contested apparatus and instruments for conducting, accumulating electricity have the same distribution channels and public as the opponent´s apparatus for recording and transmitting of sound or images. Furthermore, they can be complementary. Therefore, they are similar.

The contested mouse pads are similar to a low degree to the opponent’s computers, as they can have the same end users and distribution channels. Furthermore, they are complementary.

The contested cellular telephone accessories, namely hands-free accessories, cellular telephone covers and cellular telephone face covers are similar to a low degree to the opponent’s apparatus for transmission of sound, as they can have the same producers and distribution channels. Furthermore, they are complementary.

The remaining contested apparatus and instruments for switching, transforming, regulating or controlling electricity; batteries; motion picture films featuring comedy, drama, action, adventure and/or animation, and motion picture films for broadcast on television featuring comedy, drama, action, adventure and/or animation have different natures and purposes from the opponent’s goods. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods came from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

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 to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered to vary between average and high, because the specialised goods will not be purchased on a daily basis.

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

3. The signs

FLASH LINE
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 elements ‘FLASH’, present in both marks, and ‘LINE’ are not meaningful in certain territories, for example in those countries where English is not widely understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian- and Lithuanian-speaking parts of the public such as Hungary and Lithuania.

The earlier trade mark is a word mark, which is protected in all different typefaces.

The contested sign is a figurative mark comprising the word ‘FLASH’ in bold upper case letters. Lines extend from the left-hand side of each letter. To the left of this word, the article ‘THE’ is depicted, and is therefore the first word in this mark.

The element ‘FLASH” in the contested sign is the dominant element as it is the most eye-catching.

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).

Visually, the first element of the earlier trade mark corresponds with the second element of the contested sign, although the word has a specific graphic depiction in the contested sign. The signs differ in the figurative elements of the contested sign, in the additional (less dominant) word ‘THE’ of the contested sign and in the second word of the earlier trade mark, ‘LINE’. Therefore, they are visually similar to an average degree.

Aurally, the figurative elements of the contested sign will not be pronounced. The signs will be pronounced identically in terms of the coinciding word ‘FLASH’. They differ in their additional words, ‘LINE’ of the earlier trade mark and ‘THE’ of the contested sign. Therefore, they have a similar sound, rhythm and pronunciation which lead to a higher than average degree of aural similarity.

Conceptually, the word ‘THE’ of the contested sign belongs to basic English vocabulary and will be understood as the definite article. The rest of the words are meaningless in the relevant territory and have no impact on the conceptual comparison. As a part of one of the signs has a meaning for the relevant public, they are conceptually not similar.

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

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 partly identical, partly similar to different degrees and partly dissimilar. The signs are visually similar to an average degree, aurally similar to a higher than average degree and conceptually not similar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the average degree of visual similarity and the higher than average degree of aural similarity between the marks, the average degree of distinctiveness of the earlier trade mark and the identity or similarity between the goods, there is, even taking into account the possibility of a high degree of attention on the part of the public and the fact that the signs are conceptually not similar, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This is even more applicable to when the public has an normal degree of attention. There is also a likelihood of confusion for the goods that are similar only to a low degree, because of the significant similarities between the signs.

As regards the applicant’s arguments presented in its observations, it is considered that the earlier trade mark has a normal degree of distinctiveness, because it is meaningless in the relevant territories. The applicant has also not proven that use of its mark would reduce likelihood of confusion, and this is not apparent to the Office either. Contrary to the applicant’s opinion, the differences between the signs are not sufficient to distinguish them clearly. They will be regarded as coming from the same undertaking or from economically linked undertakings. The actual use of the trade mark by the applicant is not decisive, because the mark has to be considered as it is registered, not as it is used.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Hungarian- and Lithuanian-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 257 258 designating the European Union. 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.

Therefore, the opposition is partly 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. 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 shall 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

Alexandra APOSTOLAKIS

Peter QUAY

Karin KUHL

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.