OPPOSITION No B 2 556 507

Acer Incorporated, 7F-5, No. 369, Fuxing N. Rd., Songshan Dist., Taipei City  105, Taiwan (opponent), represented by Carlos Polo & Asociados, Profesor Waksman, 10, 28036 Madrid, Spain (professional representative)

a g a i n s t

Compañia Logistica De Hidrocarburos CLH, S.A., C/ Titán, nº 13, 28045 Madrid, Spain (applicant), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 556 507 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 294 094 for the figurative mark , namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 9 793 738 for the figurative mark . Originally the opposition was based on several earlier rights, but during the proceedings the opponent limited the scope of its opposition to the aforementioned earlier mark. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

PRELIMINARY REMARK

On 07/06/2016, the applicant filed a limitation request and Class 9 was limited as detailed further below. The opponent was duly informed and the opposition was maintained. Consequently, the opposition is directed against the remaining goods in Class 9.

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: Computers; desktops; notebooks; netbooks; servers; storages, namely data storage media; memory cards; monitors; DVD rewriters; AC Adaptors used with computers, notebooks and netbooks; battery used with computers, notebooks and netbooks; smart handheld phones; smart phone; mobile phone; electrical equipment with TV, namely electrical equipment for recording, transmission, or reproduction of sound and images; TV; Liquid Crystal Display Televisions; Plasma television; Projection TV; TVCR, namely, video cassette recorder coupled with television; DVD player coupled with television; closed-circuit television (CCTV); TV remote control; set-top box for use with television.

Following the limitation mentioned above, the contested goods are the following:

Class 9: Electronic publications, downloadable.

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 electronic publications, downloadable in Class 9 are electronic versions of traditional media, like e-books, electronic journals, online magazines, online newspapers etc. They do not coincide in any relevant points of contact when comparing them to the goods of the earlier mark, which are in the main computers, data storage media, mobile phones, apparatus for recording, transmission, or reproduction of sound and images and their electrical accessories. Not only do they differ in nature they also do not fulfil a similar function from the consumer’s standpoint. Whereas the contested goods are intended to be read for entertainment or instruction purposes, the goods covered by the earlier mark are intended to process or store data, enable communication over distance, record or reproduce sound and images or supply power. As a consequence, they are not in competition either. Furthermore, they are not commonly provided by the same companies or through the same distribution channels. Even though it is noted that the contested goods may be stored on the opponent’s data storage media, these blank data carriers are merely ancillary; they are not considered to be complementary within the meaning of the case law in the sense that they are indispensable for the use of the contested goods (see Guidelines for Examination in the Office, Part C, Opposition, 10.7. Data carriers vs recorded content, page 62-63). Also the fact that some of the opponent’s goods, such as computers or smart phones, may be needed in order to read or download the contested publications, is not enough to find them complementary, since the consumers are aware that these goods have different commercial origins. The goods at issue are, therefore, dissimilar.

2. Conclusion

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 the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected  insofar as it is based on this ground.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above-mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 60).

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 24/06/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

 

Class 9: Computers; desktops; notebooks; netbooks; servers; storages, namely data storage media; memory cards; monitors; DVD rewriters; AC Adaptors used with computers, notebooks and netbooks; battery used with computers, notebooks and netbooks; smart handheld phones; smart phone; mobile phone; electrical equipment with TV, namely electrical equipment for recording, transmission, or reproduction of sound and images; TV; Liquid Crystal Display Televisions; Plasma television; Projection TV; TVCR, namely, video cassette recorder coupled with television; DVD player coupled with television; closed-circuit television (CCTV); TV remote control; set-top box for use with television.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 23/12/2015 the opponent submitted the following evidence:

• English translations of several opposition decisions purportedly of the Spanish Patent and Trademark office concerning the trade mark ‘Acer’.

• Extracts from the website www.acer.co.uk dated 21/12/2015 showing some laptops, desktops, tablets, smartphones, monitors, projectors, wearables and a few electronic consumer goods accessories, such as cables and dongles bearing the sign .

• A Wikipedia article about Acer Inc. dated 11/11/2015. It mentions, inter alia, that:

Acer is a Taiwanese multinational hardware and electronics corporation specializing in advanced electronics technology and is headquartered in Xizhi, New Taipei City, Taiwan. Acer's products include desktop and laptop PCs, tablet computers, servers, storage devices, displays, LED; LCD and plasma televisions, smartphones and peripherals. […] In 2014, Acer was the fourth-largest personal computer vendor in the world. In the early 2000s, Acer implemented a new business model, shifting from a manufacturer to a designer, marketer and distributor of products, while performing production processes via contract manufacturers. […] Revenue US dollars 10.52 billion in 2014 and Net income US dollars 11.36 million in 2014 and 7,384 employees in 2013.

• Extracts from www.google.co.uk dated 11/12/2015 showing about 121,000,000 results of a google search for Acer.

• Extracts from www.google.co.uk dated 11/12/2015 showing images of the earlier mark as well as images of laptops, tablets, monitors and wearables bearing the earlier mark.

• Extracts from www.gsmarena.com dated 11/12/2015 showing Acer phones.

• A print out from www.acer.co.uk dated 21/12/2015 showing Acer monitors and tablets.

• A print out from www.theregister.co.uk containing an article dated 27/04/2015 about the new look of the opponent’s laptops and tablets.

• A print out from www.pcadvisor.cu.uk containing an article dated 23/04/2015 about the launch of the opponent’s latest tablets and laptops.

• A print out from www.dabs.com dated 11/12/2015 showing various Acer monitors, laptops and desktops, for sale in their Acer shop.

• A print out from www.microscope.co.uk containing an article of November 2015 with the headline: “Acer’s CEO has talked of the firm getting back to the top of the PC market but as Billy Macinnes goes through the latest results it is clear work still needs to be done”.

• A print out from www.pcauthority.com.au containing an article of 07/12/2015 titled: Acer releases new Predator gaming machines in Australia.

• A print out from www.digitaltrends.com containing an article dated 12/11/2015 about the rolling out of Acer’s latest 34-inch monitor in the United States.

• A print out from www.christianpost.com containing an article dated 14/11/2015 mentioning that Acer’s first gaming tablet dubbed as the Predator 8 is now available for pre-order in the United States.

• A print out from www.chinapost.com.tw containing an article dated 12/11/2015 titled: Acer’s leader of pan-Asia operations exits company.

• A print out from www.expertreviews.co.uk containing an article dated 06/09/2015 about the opponent’s latest Acer ultraportable laptop.

• A print out from www.trustedreviews.com dated 14/12/2015 about the opponent’s ‘Acer Aspire Switch 10 E’ tablet.

• A print out from www.theregister.co.uk containing an article dated 24/07/2015 about the opponent’s very small Acer home pc.

• A print out from www.techradar.com containing an article dated 22/06/2015 about the opponent’s Acer chromebase all-in-one touchscreen desktop.

• A print out from http://arstechnica.co.uk containing an article dated 03/09/2015 about an Internet of Things development kit that links into Acer's cloud platform, allowing tinkerers to control various aspects of their connected device via a smartphone or tablet.

• A print out from www.theregister.co.uk containing an article dated 28/04/2015 about an Acer tablet that can be used with an ordinary pencil.  

• A print out from http://venturebeat.com containing an article dated 26/10/2015 about the opponent’s electric, all-terrain vehicle demonstrated in Munich.

• A print out from www.pcr-online.biz dated 14/12/2015 about the opponent’s demonstration of its new tablets and notebook line starting with the following text: “With a hand in all the major product categories already, Acer is a computing giant. But after gathering in the new World Trade Centre complex in New York, the company proved it has even more to offer”.

• A print out from http://www.itworld.com containing an article dated 10/08/2015 about the opponent’s new Acer Windows 10 notebooks.

• A print out from www.trustedreviews.com dated 16/12/2015 containing a review of ‘Acer Chromebook C910’ dated 22/01/2015.

• A print out from www.theinquirer.net containing an article dated 27/02/2015 about the opponent’s products that can be expected to be shown from 01/03/2015 at the exhibition stand at the Mobile World Congress in Barcelona.

• A print out from www.digitalversus.com containing an article dated 28/04/2015 about three new Acer video projectors, one of which is portable.

• A print out from http://tabtimes.com containing an article dated 25/06/2015 about ‘Acer Aspire Switch 10E’, held to be one of Acer’s most popular tablets/computers.

• A print out from www.pcr-online.biz dated 14/12/2015 about the launch of a new rewards programme planned for the opponent’s channel partners in April.

• A print out from http://www.wired.co.uk containing an article dated 04/01/2015 about Acer’s largest ever Chromebook with a 15.6-inch display.  

• A print out from www.theinquirer.net containing an article dated 21/04/2015 about Acer’s new desktop PC series aimed at the small to medium sized business.

• A print out from www.prweb.com containing an article dated 11/12/2015 about Acer America announcing that it has been named a CES 2016 Innovations Award Honoree for three innovative products, including the Predator 8 gaming tablet, Predator Z850 gaming projector and Revo Build modular PC.

• A print out from www.rankingthebrands.com dated 15/12/2015 with a list of rankings where Acer is listed including the name of the rankings and by whom they were conducted, as well as the relevant years of the rankings and the positions achieved by Acer. The list shows for example Acer as number 9 on the ranking of ‘Best Laptop Brands: Overall Verdict’ by LAPTOP Magazine in 2015 and as number 8 in the same ranking in 2014.

• A print out from http://ifworlddesignguide.com dated 21/12/2015 mentioning that Acer is ranked in position 246 on their ‘iF Creative Ranking 2015’ and in position 238 on their ‘iF Company Ranking 2015’.

• A print out from www.facebook.com containing an article dated 05/06/2013 about Acer Philippines winning Reader’s Digest Trusted Brands 2013 “Gold” award under the Personal Computer/desktop/notebook/tablet category.

• A print out from https://en.ctimes.com.tw containing an article dated 06/10/2015 about Acer announcing that five of its products have won at the 2015 edition of Japan’s Good Design Award, namely a mini PC, a (convertible) notebook, a 2-in-1 notebook, a gaming monitor and a portable LED projector.

• A print out from http://www.mustek.co.za containing an article dated 07/04/2015 mentioning that Acer won the Red Dot Design Awards 2015 for design of five of the company’s different notebook offerings.  

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired a reputation in the European Union.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market nor conduct an ex-officio investigation, but should exclusively base its findings on the information and evidence submitted by the opponent.

It follows that the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public. The reputation of the earlier mark must be established to the satisfaction of the Office and not merely assumed.

As regards its contents, the more indications the evidence gives about the various factors from which reputation may be inferred, the more relevant and conclusive it will be. In particular, evidence which as a whole gives little or no quantitative data and information will not be appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, will not be sufficient to support a finding of reputation.

Whilst it is noted that the Wikipedia article provides some quantitative data as regards the opponent’s revenues, staff number and alleged ranking as a personal computer vendor, the information contained in this article lacks certainty, as it is taken from a collective encyclopaedia established on the Internet, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously and therefore is, at most, of very little probative value (see, to that effect, 16/06/2016, T-614/14, KULE, EU:T:2016:357, § 47 and 10/02/2010, T-344/07, ‘Homezone’, § 46 as well as 17/10/2013, R 1825/2012-4 – ‘Dresdner Striezel-Glühwein/Dresdner Stollen et al.’; 21/11/2013, R 159/2013-1 – ‘Apollo Live Club (Fig. Mark)/Shape of A Microphone (3D Mark) et al.’).

The rest of the evidence is in the main dated after the filing date of the contested sign, that is after 24/06/2015, and does not allow the drawing of conclusions as to the reputation of the earlier mark prior to the relevant date for the following reasons.

This evidence mainly consists of sales offers, announcements and reviews of new Acer products. Although they may show some use of the trade mark, they do not provide any information on the market share held by the mark, the position it occupies in the relevant markets in relation to competitors’ goods, the extent of its use or the extent to which it was promoted. It is not mentioned how many of these products are sold or which percentage of the target public was reached through these media. The fact that the opponent produces goods under the trade mark Acer does not necessarily mean that the brand is reputed. Hence, it cannot be inferred from the mere existence of some sales offers, products reviews or announcements that a substantial part of the relevant public knows the mark in the European Union.

Moreover, most of the documents provide little or no data as to the relevant territory or explicitly refer to countries outside of the EU such as the United States, Australia, Japan or the Philippines. For example, the fact that Acer Philippines won the Reader’s Digest Trusted Brands Award 2013 under the Personal Computer/desktop/notebook/tablet category does not say anything about the trade mark’s repute in the European Union. Other documents, like the print out from www.rankingthebrands.com merely including a list of different brand rankings where Acer is listed but without providing any further specific details as to the criteria used for appearing in the different rankings, their territorial scope or exactly what was measured in the respective rankings of the brands, does not, without any such further information, provide sufficient indications to support that the mark enjoys a reputation in the relevant territory.

Also, most documents are merely suggestive of the reputation of the earlier mark but are not sufficient, in themselves, to establish reputation. Although the print out from www.pcr-online.biz referring to Acer as a computing giant, or the print out from www.microscope.co.uk mentioning that Acer’s CEO wants to get back to the top of the PC market, may suggest a certain renown of the earlier mark, these personal quotes cannot be considered to reflect the perception of a significant part of the public as such a conclusion would be based on mere assumptions about the perception of the rest of the public in the European Union.

Likewise, the various design awards are not necessarily indicative of the reputation of the brand. The innovative character or the beauty of the design of a product does not necessarily imply that the trade mark under which that product is marketed is reputed. A start-up company can produce beautifully designed or very innovative products without being renowned for them. Likewise, a famous undertaking can develop beautifully designed products under a new trade mark which is not reputed.

Finally, as regards the English translations of decisions purportedly of the Spanish Patent and Trade Mark Office, apart from the fact that no copies of the actual decisions themselves from the Spanish Patent and Trade Mark Office were submitted and that some only concerned likelihood of confusion and not reputation, it must be observed that each case has to be assessed on its own merits. Therefore, even if the Spanish Office has found the mark Acer to be reputed in Spain, as per some of the translations provided, it is not clear from the evidence submitted if the Spanish Office based its assessment on the same evidence as that filed in the present proceedings, nor how it came to its conclusion that the mark Acer is reputed or in relation to which goods.  

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

Furthermore, since the opposition is not successful, there is no need to examine the applicant’s claims that it has due cause for the use of the contested trade mark.

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

Sam GYLLING

Adriana VAN ROODEN

Catherine MEDINA

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.