OPPOSITION No B 2 741 711

Shenzhen Win-Top Electronic Tech Co., Ltd., Room 1005 of 10th Floor, Bldg.2, Shang henglang New Industry Zone, Tongsheng Community, Dalang Subdistrict, Bao'an District, Shenzhen, People's Republic of China (opponent), represented by Arnason Faktor, Gudridarstig 2-4, Reykjavik  113, Island (professional representative)

a g a i n s t

Tigo Bateries S.L., C/ Infante Don Manuel, 12 Ac, 03203 Elche, Spain (applicant), represented by Paola Mazzilli, Calle Segura 12- bajo, 03004 Alicante, Spain (professional representative).

On 18/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 741 711 is partially upheld, namely for the following contested goods:

Class 9:         Sleeves for laptops; headphones; mobile telephone covers made of cloth or textile materials; cell phone covers; display screen protectors in the nature of films for mobile phones; pouches for photographic apparatus; DVD cases; mouse pads; loudspeakers; portable speakers; wireless speakers; USB flash drives;  covers for smartphones; flip covers for tablet computers; covers for portable media players; cases adapted for DVD players; leather cases for tablet computers; covers for digital media players; dust covers for computers; covers for data storage devices; cases for music storage devices; cases for digital media players; cases for portable media players.

2.        European Union trade mark application No 15 622 905 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 all the goods of European Union trade mark application No 15 622 905 for the figurative mark. The opposition is based on European Union trade mark registration No 11 458 064 for the figurative mark. 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 on which the opposition is based are the following:

Class 9:         Computer peripheral devices; portable telephones; electric theft prevention installations; chargers for electric batteries; tablet personal computer cases; mobile phone case.

The contested goods are the following:

Class 9:         Sleeves for laptops; rechargeable batteries; headphones; mobile telephone covers made of cloth or textile materials; cell phone covers; display screen protectors in the nature of films for mobile phones; pouches for photographic apparatus; DVD cases; mouse pads; loudspeakers; portable speakers; wireless speakers; USB flash drives; computer housings; covers for smartphones; flip covers for tablet computers; covers for portable media players; cases adapted for DVD players; leather cases for tablet computers; covers for digital media players; dust covers for computers; covers for data storage devices; cases for music storage devices; mobile telephone batteries; battery chargers for use with telephones; cases for digital media players; cases for portable media players.

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 sleeves for laptops overlap with the opponent’s tablet personal computer cases in Class 9. Therefore, they are identical.

The contested flip covers for tablet computers; leather cases for tablet computers are included in the broad category of the opponent’s tablet personal computer cases in Class 9. Therefore, they are identical.

The contested battery chargers for use with telephones are included in the broad category of the opponent’s chargers for electric batteries in Class 9. Therefore, they are identical.

The contested headphones; loudspeakers; portable speakers; wireless speakers are included in the broad category of the opponent’s computer peripheral devices in Class 9. Therefore, they are identical.

The contested mobile telephone covers made of cloth or textile materials; cell phone covers; covers for smartphones are included in the broad category of the opponent’s mobile phone case in Class 9. Therefore, they are identical.

The opponent’s chargers for electric batteries are necessary for the proper functioning of the contested rechargeable batteries; mobile telephone batteries and, therefore, they are considered complementary to them. In addition, they have the same main purpose of providing power for electrical items. Finally, since the undertakings that sell batteries (alone or together with a device such as a mobile phone) also often sell the corresponding charger, these goods are considered highly similar to each other.

The contested display screen protectors in the nature of films for mobile phones are highly similar to the opponent’s mobile phone case, as they have the same purpose of protecting mobile phones; they also coincide in their distribution channels, relevant public and commercial origin.

The contested pouches for photographic apparatus; DVD cases; covers for portable media players; cases adapted for DVD players; covers for digital media players; covers for data storage devices; cases for music storage devices; dust covers for computers; cases for digital media players; cases for portable media players are similar to a high degree to the opponent’s tablet personal computer cases in Class 9. These goods share the same nature and a very similar purpose. They can be manufactured by the same business entities and move through the same distribution channels.

The contested mouse pads are similar to the opponent’s computer peripheral devices that are auxiliary devices such as a computer mouse or keyboard that connects to and works with the computer in some way. They can be complementary. Furthermore, they have the same distribution channels and relevant public.

The contested USB flash drives are similar to the opponent’s computer peripheral devices since the formers might be used to install the latters and as a consequence allow them to function properly. Therefore, they are considered similar.

The contested computer housings are dissimilar to all of the opponent’s goods. Despite belonging to a broad category of IT goods, these goods have no direct points of contact. They have different purposes and method of use. They are neither in competition nor interchangeable. They are sold via different channels and their relevant public does not overlap. They are also produced by different undertakings.

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.

The level of attention is considered to be average.

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). 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about the origin due to similarities that pertain solely to non-distinctive elements.

The letter ‘R’ placed on the right upper side in the contested sign is barely perceptible and thus not noticeable at first sight. Moreover, even though it has no circle, this element might still be perceived as an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this element is negligible and will not be taken into consideration for the purposes of the comparison.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Even though, the marks as a whole have no meaning, the Opposition Division considers it reasonable to assume that the relevant public will dissect the term ‘POWER’ in both marks. The relevant public will perceive this English word as a very commonly used one in the electronic context, i.e. as a reference to ‘the rate at which energy is produced or electricity obtained in large quantities from a fuel source that is used to operate machines, lights, and heating electricity’ (see Collins English Dictionary online).

Within the context of some of the contested goods in Class 9, namely rechargeable batteries; mobile telephone batteries; battery chargers for use with telephones and for the goods chargers for electric batteries of the earlier mark, the term ‘POWER’ is one of the core terms and ubiquitous in the area of batteries. Therefore, the relevant public for these goods throughout the European Union will also understand that the word ‘POWER’ refers directly to the purpose of the goods concerned, namely to give or to charge them with power. Thus, the word ‘POWER’ of the conflicting signs, in relation to the goods containing batteries (as listed above) is purely descriptive. Insofar as these goods are concerned, the distinctive elements of the marks are the remaining ones, i.e. ‘DX’ and ‘dg’, respectively, neither of which having a meaning.

On the other hand, for the remaining goods, it is reasonable to assume that the common term ‘POWER’ has at least a low distinctive character, if understood (i.e. might be of a low distinctiveness in relation to the contested headphones; loudspeakers; portable speakers; wireless speakers and the opponent’s peripherals, since these goods require power to work, whereas it is inherently distinctive in relation to the remaining goods (e.g. dust covers for computers), as there is no direct link between the meaning of this word and those goods, which also makes it less likely to be understood by the non-English speakers.

Visually, the signs share the same amount of letters coinciding in the first letter ‘D’ and the letters ‘POWER’ (the latter making an element that is  non-distinctive for part of the goods), whereas they differ in the second letters ‘X’ vs ‘g’, which have no resemblance to each other. Regarding the typeface in which the verbal elements of the marks under comparison are written, their stylisation is fairly standard and will not lead the consumer’s attention away from the elements they seem to embellish.

Consequently, the marks are considered visually similar to a low degree, if any, in relation to the goods for which the common term ‘POWER’ is non-distinctive. In relation to the remaining goods this common term enjoys at least a minimum distinctiveness, and the marks are considered visually similar to at least a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛D-*-P-O-W-E-R’, present identically in both signs. The pronunciation differs in the sound of the second letters ‛X’ vs ‘g’, respectively (having no resemblance to each other).

Since the common term ‘POWER’ is non-distinctive in relation to some of the goods in Class 9, in relation to those goods the marks are aurally similar to a low degree, if any. In relation to the remaining goods for which this common term enjoys at least a minimum distinctiveness, the marks are considered aurally similar to at least a low degree.

Conceptually, neither of the signs has a meaning as a whole. Although, in relation to part of the goods, the coinciding word ‘POWER’ will evoke a concept for the whole relevant public, as referred to above, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of any of the marks insofar as rechargeable batteries; mobile telephone batteries; battery chargers for use with telephones; chargers for electric batteries are concerned. The attention of the relevant public will be attracted by the additional verbal elements, the letters ‘DX’ versus ‘dg’, which have no meaning. Therefore, the signs are not similar conceptually in relation to these goods.

Insofar as the remaining goods are concerned in relation to which the common word ‘POWER’, if understood, enjoys at least a low degree of distinctiveness, the signs under comparison are conceptually similar to at least a low degree. As this element might not be understood by a part of the relevant public (in relation to part of the goods), in case there is no relation between the goods at stake, the conceptual comparison is neutral.

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, despite the presence of a non-distinctive element in the mark in relation to some of the goods as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, some goods are identical or similar to various degrees, while a part of the goods has been found dissimilar.

The signs are visually and aurally similar, at least to a low degree. From the semantic perspective, the signs are either similar to at least a low degree, not similar or the conceptual comparison remains neutral, as explained in section c) above.

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 and 21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The coinciding conspicuous part of the signs in fact is confined to a non-distinctive element ‘POWER’ in relation to rechargeable batteries; mobile telephone batteries; battery chargers for use with telephones; chargers for electric batteries. Thus, as a result, what the relevant public will keep in mind is the distinctive sequence of the two first letters ‘DX’ vs ‘dg’, respectively, contained at the beginning of the marks under comparison and the marks’ graphic representation.

Therefore the assessment of the comparison of the marks in relation to the above mentioned goods is reduced to, de facto, graphic representation and two first letters elements. It is considered that the fact that the two letters elements differ in one letter which constitutes the second letter of the same is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. The difference in these second letters is striking as those letters are not even remotely similar to each other (visually or aurally). This plays crucial role in the overall impression created by the signs and in light of the foregoing, the signs are considered not sufficiently similar to lead to a likelihood of confusion in relation to these goods, even taking into account the latter’s identity. Therefore, the opposition is rejected in relation to the contested rechargeable batteries; mobile telephone batteries; battery chargers for use with telephones. 

Insofar as the remaining identical or similar to different degrees goods are concerned for which the common element ‘POWER’ enjoys at least a low distinctive character, the Opposition Division finds that there is a likelihood of confusion as the differing letters/sounds are sandwiched between the distinctive ones and have a lesser impact on the overall impression created by the signs than in the scenario when ‘POWER’ is non-distinctive. Therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 11 458 064.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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 will 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

Chantal VAN RIEL

Klaudia MISZTAL

Vita VORONECKAITE

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.