OPPOSITION No B 2 746 991

Bigben Interactive, Société Anonyme, 396/466 rue de la Voyette Crt2, 59273 Fretin, France (opponent), represented by Maxime Chaminade, 59 rue des Petits Champs, 75001 Paris, France (professional representative)

a g a i n s t

Zhejiang Mustang Battery Co. LTD., No.818 Rongji Road Luotuo Street, Zhenhai District, Ningbo, Zhejiang Province, People’s Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo 65 – Local 1 "Llopis & Asociados", 03012 Alicante, Spain (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 746 991 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 301 922. The opposition is based on, inter alia, European Union trade mark registration No 2 568 293. 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 2 568 293.

1. The goods

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

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching 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, data processing equipment and computers; fire-extinguishing apparatus; fire-extinguishing apparatus; television apparatus.

The contested goods are the following:

Class 9: Plates for batteries; batteries for lighting; chargers for electric batteries; batteries, electric, for vehicles; galvanic cells; galvanic batteries; batteries, electric; accumulators, electric; photovoltaic cells; solar batteries.

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.

Although the goods in question are not identical, it is clear that some of the contested goods are similar to the goods on which the opposition is based. Batteries are for accumulating electricity and as such are an indispensable part for finished products such as laptops to function. The contested goods include different types of batteries and chargers such as batteries, electric; chargers for electric batteries which are therefore considered similar to the opponent’s computers since they are complementary, can coincide in their producers, in their distribution channels and in their end user.

For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were similar to those of the earlier mark.

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 assumed to be similar are directed at the public at large and to business consumers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

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 element ‘bigben’ in the earlier sign is the dominant element as it is the most eye-catching. It will be understood as a whole by the relevant public as referring to the clock tower of the Houses of Parliament in London and its bell, as the ‘BigBen’ is one of London’s most famous landmarks. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The English word ‘interactive’ below the ‘bigben’ element will be understood by the relevant public since the word is the same or very close to equivalent words in official languages of the European Union: for example ‘interactiv’ in Romanian, ‘interactivo’ in Spanish, ‘interativo’ in Portuguese, ‘interattivo’ in Italian or ‘interactif’ in French. It will be perceived as referring to a ‘continuous two-way transfer of information’ or ‘(of two or more persons, forces, etc.) acting upon or in close relation with each other; interacting’.

Bearing in mind that the relevant goods are all computer-related (and its components), it is considered that this element is weak for these goods since interaction is required between the user and the apparatus. The public will not pay as much attention to this weak element as to the other, more distinctive verbal element ‘bigben’. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The contested sign has no elements that could be considered clearly more dominant than other elements.

The element ‘Big’ of the contested sign will be understood by the English-speaking public as referring to a size. As it can refer to the goods or their characteristics, it is not particularly distinctive. For the public who does not understand the word ‘big’, this element will be distinctive. The element ‘M’ of the contested sign will be associated with a letter of the Latin alphabet. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Visually, the signs coincide in their first element ‘big’. However this coincidence rather loses impact since in the earlier sign the element is conjoined to ‘ben’ and thus though the signs may indeed share ‘big’, it is not featured independently in the earlier mark. Since the signs differ in the element ‘ben’, the smaller and weak word ‘interactive’ of the earlier sign, the letter ‘M’ of the contested sign and in their stylisation, they are therefore similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛big’ present identically at the beginning of both signs. However, the pronunciation differs in the sound of the letters ‛ben’,  in the weak word ‘interactive’ of the earlier sign, if pronounced, and in the sound of the letter ‘M’ of the contested sign which have no counterparts in the contested mark/earlier sign. Therefore, the signs are similar to an average degree.

Conceptually, the signs both contain the word ‘big’ which will be understood by English speakers. However, English speakers will perceive the earlier mark as a whole, ‘Bigben’ since this is such a well-known monument. Despite viewing the earlier mark as a whole, there will nevertheless be an inevitable conceptual link owing to ‘big’, but it is greatly mitigated by the strong concept conveyed by the earlier mark as a whole. For this reason, only a low degree of conceptual similarity will be found for English speakers. The rest of the public will not be able to understand the word ‘big’ in the contested sign but will perceive the meaning of the verbal elements of the earlier mark and the letter ‘M’ in the contested sign. As the signs will be associated with a dissimilar meaning, the signs are not conceptually similar for this part of the public.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The signs have been found conceptually not similar for part of the public and similar to only a low degree for the English-public speaking part of the public. Moreover, the signs have been found visually similar to only a low degree and aurally similar to an average degree. This conclusion has been reached in light of the fact that the common element ‘big’ will be perceived alone in the contested mark but as a whole with ‘ben’ forming the sequence ‘big ben’ in the earlier sign, referring to one of London’s most famous monuments. The additional elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks. 

Considering all the above, even assuming that the goods are all similar, there is no likelihood of confusion on the part of the public even when displaying a higher than average degree of attention. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark registration No 13 285 119 for the figurative mark .

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains a circle shaped device at the beginning of the sign before the verbal element which is not present in the contested trade mark. Even though the contested goods would be identical to the earlier goods, the outcome cannot be different since the signs are not similar enough.  

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

Saida CRABBE

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.