OPPOSITION No B 2 738 378

DeePoon LLC, Suite 2189, No. 1 Building, No. 151 Chuansha Road, Pudong New District, Shanghai 200125, People’s Republic of China (opponent), represented by Pfenning, Meinig & Partner mbB, Joachimsthaler Str. 10-12, 10719 Berlin, Germany (professional representative)

a g a i n s t

Chongqing Lingdun Business Information Consulting Co., Ltd., No.27-7, Building 6, Aoti Road, Jiulongpo District, Chongqing 404100, People’s Republic of China (applicant), represented by Würth & Kollegen, Sögestr. 48, 28195 Bremen, Germany (professional representative).

On 01/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 738 378 is upheld for all the contested goods.

2.        European Union trade mark application No 15 338 858 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 15 338 858. The opposition is based on international trade mark registration No 1 297 922 designating the European Union. The opponent invoked Article 8(1)(a) and (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 and services

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

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

Class 28:        Apparatus for games; portable games with liquid crystal displays; counters [discs] for games; automatic amusement machines and coin-operated amusement machines; games; arcade video game machines; intelligent toys; toy cameras; toy telescopes; toys activated by laser.

Class 38:        Television broadcasting; cable television broadcasting; providing Internet chat rooms; providing access to databases; cellular telephone communication; message sending; providing user access to global computer networks; communications by computer terminals; electronic bulletin board services [telecommunications services]; computer aided transmission of messages and images.

Class 41:        Educational services; teaching; games equipment rental; provision of on-line videos; publication of electronic books and journals on-line; providing on-line electronic        publications, which are not downloadable; cinema presentations; production of radio and television programs; television entertainment; game services provided on-line from a computer network.

Class 42:        Computer software design; hosting computer sites [web sites]; conversion of data or documents from physical to electronic media; monitoring of computer systems by remote access; computer system design; consultancy in the design and development of computer hardware; data conversion of computer programs and data [not physical conversion]; computer programming; providing search engines for the Internet; duplication of computer programs.

The contested goods are the following:

Class 9:        Computer game software; laptop computers; computer hardware; portable media players; video cameras; smartglasses; virtual reality game software; integrated circuits; head-mounted video display apparatus; wearable computer peripherals; wearable computer peripheral devices; wearable portable media players; wearable monitors.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 9

The contested laptop computers; portable media players are identically included in the opponent’s list of goods in Class 9.

The contested computer hardware refers to the physical parts and components of a computer. They are included in the broad category of the opponent’s laptop computers. Therefore, they are identical.

The contested wearable portable media players are included in the broad category of the opponent’s portable media players. Therefore, they are identical.

The contested video cameras overlap with the opponent’s audiovisual teaching apparatus. Consequently, they are identical.

The contested head-mounted video display apparatus is a device that can be used to privately view different types of content. It overlaps with the opponent’s portable media players. Therefore, they are identical.

The contested computer game software; virtual reality game software is software for entertainment purposes that normally works on gaming devices. These goods have the same purpose, distribution channels and producers as the opponent’s apparatus for games in Class 28. They target the same end users and are complementary to each other. Consequently, they are similar.

The contested smartglasses; wearable computer peripherals; wearable computer peripheral devices; wearable monitors are all devices that have functionalities in common with computers and can be used as more flexible computer devices. These goods and the opponent’s laptop computers can have the same usual origins and distribution channels. They target the same end users and can be complementary to each other. Therefore, they are similar.

The contested integrated circuits, or microchips, refer to a set of electronic circuits used in various kinds of electronic equipment. They can function as amplifiers, oscillators, timers, counters, computer memories or microprocessors. They can be produced by the same companies as the opponent’s laptop computers. Furthermore, they are complementary. Therefore, they are similar to a low degree.

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 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, the frequency of purchase and their price.

3. The signs

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.

It is possible that a part of the public, for instance English-speaking consumers, could perceive certain concepts in the signs, such as ‘Poon’ in the earlier mark or ‘deep’ in the contested mark. These elements are not meaningful in certain territories, for example, in those countries where English is not understood. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which these signs do not evoke any concept, namely the Spanish-, Italian- and Polish-speaking parts of the public.

The marks under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the verbal (and sole) elements of the signs coincide in six out of their seven letters depicted in the same sequence. However, they differ in their second letters, namely ‘ë’ in the earlier mark versus ‘E’ in the contested sign, and in the fact that the contested sign is written completely in upper case while only the first and fourth letters of the earlier mark are written in upper case and the rest in lower case. Moreover, there is a space between the third and fourth letters of the earlier sign, which may, however, go unnoticed by the relevant public.

Therefore, the signs are visually similar at least to an average degree.

Aurally, the part of the public under consideration will pronounce both of the marks identically according to the pronunciation rules of the relevant languages. The letter ‘ë’ does not exist in these languages; consequently, its pronunciation is identical to that of the letter ‘E’.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the part of the public under consideration 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 identical or 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 and services 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

The contested goods are identical or similar to the goods covered by the earlier international trade mark.

The signs under comparison are visually similar at least to an average degree and aurally identical, as explained above. The signs differ in one letter, namely ‘ë’ in the earlier mark and ‘E’ in the contested mark. Furthermore, they differ in the case used for some of the letters as well as in the space dividing the earlier mark into two parts. None of the differences affect the identical pronunciation of the words. The conceptual aspect does not influence the assessment of the similarity of the signs.

Account must be 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).

Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

Considering all of the above, the Opposition Division finds that the similarities between the signs are so significant that they are likely to lead to confusion at least for the part of the public for which the marks evoke no concepts, such as the Spanish-, Italian- and Polish-speaking parts 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. Consequently, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 297 922 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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

Ana MUÑIZ RODRIGUEZ

Birgit Holst FILTENBORG

Plamen IVANOV

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.