OPPOSITION No B 2 687 419

Panaventura S.L., Bravo Murillo 297, Portal 10, 1º Dcha, 28020 Madrid, Spain (opponent), represented by González Vacas, S.L., Sagasta, 4, 28004 Madrid, Spain (professional representative)

a g a i n s t

Jerry Liu, Floor 18, Building C2, Nanshanzhiyuan, No. 1001, Xueyuan Avenue, Xili Campus Station, Taoyuan Street, Nanshan District, Shenzhen City, Guangdong Province, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center VERTAS, Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 21/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 687 419 is partially upheld, namely for the following contested goods and services:

Class 9:

Data processing apparatus; computer peripheral devices; computer software, recorded; mechanisms for coin-operated apparatus; plotters; measures; electronic notice boards; signals, luminous or mechanical; radios; sound transmitting apparatus; projection apparatus; measuring instruments; teaching apparatus; probes for scientific purposes; optical apparatus and instruments; fibre [fiber (Am.)] optic cables; light-emitting diodes [LED]; fire extinguishing apparatus; radiological apparatus for industrial purposes; railway traffic safety appliances; alarms; accumulators, electric, for vehicles; integrated circuits.

Class 42:

Scientific research; research and development of new products for others; mechanical research; technical research; chemical research; material testing; industrial design; oil prospecting; computer software design; consultancy in the design and development of computer hardware; computer system design.

2.        European Union trade mark application No 15 021 116 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 021 116, namely against all the goods and services in Classes 9, 35 and 42. The opposition is based on Spanish trade mark registration No 3 077 474. 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 and services

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

Class 9:	Apparatus and instruments scientific, nautical, optical instruments, of weighing, measuring, of signalling, of control (inspection) of teaching: apparatus and instruments of accumulation, regulation and control of the electricity; apparatus for recording, transmission or reproduction of sound and images; magnetic supports of record; vending machines; equipments of processing of information and computers.
Class 35:	Service of wholesale and minor in establishments and in it world networks of all kinds of devices and systems destined for the artificial intelligence, applicable to labors domesticates and home automation; services of import and export.
Class 42:	Scientific and technological services; services of analysis and investigation in these areas; design and development of software and hardware.

The list of contested services in Class 35 was amended by the applicant during the proceedings and the opponent was duly informed of this. Accordingly, the contested goods and services are the following:

Class 9:	Data processing apparatus; computer peripheral devices; computer software, recorded; mechanisms for coin-operated apparatus; plotters; measures; electronic notice boards; signals, luminous or mechanical; radios; sound transmitting apparatus; projection apparatus; measuring instruments; teaching apparatus; probes for scientific purposes; optical apparatus and instruments; fibre [fiber (Am.)] optic cables; light-emitting diodes [LED]; fire extinguishing apparatus; radiological apparatus for industrial purposes; railway traffic safety appliances; alarms; accumulators, electric, for vehicles; integrated circuits.
Class 35:	Compilation of information into computer databases; systemization of information into computer databases; sponsorship search.
Class 42:	Scientific research; research and development of new products for others; mechanical research; technical research; oil prospecting; chemical research; material testing; vehicle roadworthiness testing; industrial design; design of interior decor; dress designing; computer software design; consultancy in the design and development of computer hardware; computer system design.

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 data processing apparatus is included in the broad category of, or overlaps with, the opponent’s equipments of processing of information and computers. Therefore, they are identical.

Measuring instruments; teaching apparatus are identically contained in both lists of goods.

The contested measures are included in the broad category of the opponent’s apparatus and instruments of measuring. Therefore, they are identical.

The contested electronic notice boards; projection apparatus; sound transmitting apparatus; radios are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound and images. Therefore, they are identical.

Nowadays, multimedia electronic devices combine functionalities such as video camera, mobile phone, mobile computing platform, etc. Therefore, the contested optical apparatus and instruments are included in the broad category of, or overlap with, the opponent’s apparatus for recording, transmission or reproduction of sound and images. Therefore, they are identical.

The contested radiological apparatus for industrial purposes refers to devices for capturing and developing images that have many different uses in factories or industrial plants; nonetheless, they are still audio-visual and photographic devices. Consequently, they are included in the broad category of, or overlap with, the opponent’s apparatus for recording, transmission or reproduction of sound and images. Therefore, they are identical.

The contested signals, luminous or mechanical; alarms; light-emitting diodes [LED] are included in the broad category of the opponent’s apparatus and instruments of signalling. Therefore, they are identical.

The contested probes for scientific purposes are included in the broad category of the opponent’s apparatus and instruments scientific. Therefore, they are identical.

The contested railway traffic safety appliances are included in the broad category of, or overlap with, the opponent’s apparatus and instruments of signalling, of control (inspection). Therefore, they are identical.

The contested accumulators, electric, for vehicles; integrated circuits are included in the broad category of, or overlap with, the opponent’s apparatus and instruments of accumulation, regulation and control of the electricity. Therefore, they are identical.

The contested computer peripheral devices; plotters (also computer peripheral devices) are complementary to the opponent’s computers. They are typically sold through the same outlets, target the same public and can originate from the same producers. Therefore, they are similar.

The contested computer software, recorded is complementary to the opponent’s computers. They have the same distribution channels, target the same public and can originate from the same producers. Therefore, they are similar.

The opponent’s apparatus and instruments of signalling include fire alarms, which are sold by the same specialised companies as the contested fire extinguishing apparatus. Consequently, they have the same producers or providers and the same distribution channels; therefore, they are similar to a low degree.

The contested fibre [fiber (Am.)] optic cables are cables containing one or more optical fibres, used to carry light. The optical fibre elements are typically individually coated with plastic layers and contained in a protective tube suitable for the environment where the cable will be deployed. Different types of cable are used for different applications, for example short distance optical connection for high-quality audio/video devices, long distance telecommunication or providing a high-speed data connection between different locations. These cables can have the same manufacturers as the opponent’s optical instruments. They may be offered to the same purchasing public in the same outlets, as these cables can be used in combination with the opponent’s goods. Therefore, they are similar to a low degree.

On the other hand, the contested mechanisms for coin-operated apparatus, although they can be components of, for instance, finished vending machines, are dissimilar to all the opponent’s goods in Class 9. The mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Similarity will be found only in exceptional cases and requires that at least some of the main criteria for a finding of similarity, such as having the same producers or public or being complementary, are met. The target publics are different, as the applicant’s components are intended for industry and not the final consumer. The contested goods have different distribution channels and a different relevant public from those of the opponent’s goods. Their intended purposes and methods of use are also different. Consequently, these contested goods are dissimilar to all the opponent’s goods.

As regards the opponent’s services in Classes 35 and 42, first, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, namely movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Although in some cases there is a clear connection between goods and services, usually due to a strong, interdependent, complementary relationship, this is not so in the present case. The contested mechanisms for coin-operated apparatus also have a different nature, purpose and method of use from those of the opponent’s services in Class 35, which are wholesale and retail services and import/export services, and in Class 42, which are scientific and technological services and design and development of software and hardware. They also differ in the undertakings providing them and do not have the same distribution channels. Furthermore, they target different publics and are neither in competition nor complementary; therefore, they are dissimilar to all the opponent’s services.

Contested services in Class 35

The contested compilation of information into computer databases; systemization of information into computer databases are business services provided by professionals or specialised companies focusing on the collection and systematisation of business data. The contested sponsorship search refers to advertising services provided by professionals or specialised companies in the advertising and marketing industry. They have a different nature, purpose and method of use from those of the opponent’s services in Class 35, which are wholesale and retail services and import/export services, and in Class 42, which are scientific and technological services and design and development of software and hardware. They also differ in the undertakings providing them and do not have the same distribution channels. Furthermore, they target different publics and are neither in competition nor complementary; therefore, they are dissimilar.

As regards the opponent’s goods in Class 9, first, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, namely movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Although in some cases there is a clear connection between goods and services, usually due to a strong, interdependent, complementary relationship, this is not so in the present case. The contested services and the opponent’s goods have different natures, purposes and methods of use. They are clearly not in competition or complementary, and they do not come from the same producers or providers. They target very different publics and are offered or sold through different channels. Therefore, the contested compilation of information into computer databases; systemization of information into computer databases; sponsorship search are dissimilar to all the opponent’s goods.

Contested services in Class 42

The contested scientific research; research and development of new products for others; mechanical research; technical research; chemical research are included in the broad categories of, or overlap with, the opponent’s scientific and technological services; services of analysis and investigation in these areas. Therefore, they are identical.

The contested material testing is intended to determine the properties of various kinds of material in a variety of areas. These services overlap with the opponent’s scientific and technological services, which could include testing processes. The services are considered identical.

The contested computer software design; consultancy in the design and development of computer hardware; computer system design are included in the broad categories of the opponent’s design and development of software and hardware. Therefore, they are identical.

The contested industrial design refers to services provided by industrial engineers consisting in the process of design applied to products that are to be manufactured through techniques of mass production in various industries and factories. The contested oil prospecting is the search by petroleum geologists and geophysicists for hydrocarbon deposits, such as oil and natural gas, beneath the Earth’s surface. These services are closely related to the broad category of the opponent’s scientific and technological services; services of analysis and investigation in these areas. These services may have the same providers, end users and distribution channels. They are found to be at least similar.

The contested design of interior decor; dress designing are design services provided by professionals or specialised companies in the decoration and fashion industries. The contested vehicle roadworthiness testing is a procedure, mandated by national or subnational governments in many countries, in which a vehicle is inspected to ensure that it conforms to regulations governing safety, emissions or both. Such an inspection can be required at various times; typical intervals are every two years and every year.

These contested services design of interior decor; dress designing; vehicle roadworthiness testing have a different nature, purpose and method of use from those of the opponent’s services in Class 35, which are wholesale and retail services and import/export services, and in Class 42, which are scientific and technological services and design and development of software and hardware (very specific). They also differ in the undertakings providing them and do not have the same distribution channels. Furthermore, they target different publics and are neither in competition nor complementary; therefore, they are dissimilar.

As regards the opponent’s goods in Class 9, first, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, namely movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Although in some cases there is a clear connection between goods and services, usually due to a strong, interdependent, complementary relationship, this is not so in the present case. The contested services and the opponent’s goods have different natures, purposes and methods of use. They are clearly not in competition or complementary, and they do not come from the same producers or providers. They target very different publics and are offered or sold through different channels. Therefore, the contested design of interior decor; dress designing; vehicle roadworthiness testing are dissimilar to all the opponent’s goods.

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 and services found to be identical or similar to various degrees are directed at the public at large (e.g. in the case of computer peripheral devices) and also at business customers with specific professional knowledge or expertise in different fields (e.g. in the case of railway traffic safety appliances and scientific research).

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark consists of the verbal element ‘OBOT’ written in a standard font with the letters ‘BOT’ in bold. This verbal element is preceded by a figurative element of approximately the same height as the letters. It consists of a broken circle intersected in its lower part by two semicircles.

The contested sign is also a figurative mark, consisting of the verbal element ‘DOBOT’ written in a slightly stylised black bold font using upper case letters.

The verbal element ‘OBOT’ of the earlier mark and the contested sign ‘DOBOT’ have no meaning for the relevant public and are, therefore, distinctive. Similarly, the figurative element of the earlier mark does not convey any particular meaning and it is also distinctive. Neither of the marks, therefore, has any element that could be considered clearly more distinctive than other elements.

Moreover, there are no elements in the signs under comparison that could be considered more dominant (visually eye-catching) than other elements.

When signs consist of both verbal and figurative components, as in the earlier mark, 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). This consideration is particularly important when the figurative elements are abstract and cannot be associated with any concept by the relevant public, as is the case here.

Visually, the signs are similar to the extent that they coincide in the letters ‘*OBOT’; therefore, the verbal element of the earlier sign is included in its entirety in the contested sign. However, they differ in the first letter, ‘D’, of the contested sign and in the figurative device present only in the earlier mark. The signs also differ in the slight stylisation of their verbal elements (different fonts and colours, namely grey versus black).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛*OBOT’, present identically in both signs. The pronunciation differs only in the sound of the letter ‛D’ of the contested sign, which has no counterpart in the earlier mark.

In the absence of further differing phonemes, the signs are aurally highly similar.

Conceptually, as indicated above, the figurative device of the earlier mark will not be associated with any meaning by the public in the relevant territory, and neither will the word elements of the signs; therefore, neither of the signs has a meaning. 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 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Some of the contested goods and services are identical or similar to various degrees to those of the opponent, and some of the contested services are dissimilar. The degree of attention of the relevant public may vary from average to high.

Account is also 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 with 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).

The commonalities between the signs reside in the verbal element of the earlier mark, which is included in its entirety in the contested sign. As detailed in section c), verbal elements have a higher impact on the consumer’s perception and recollection of a sign, which renders the signs in dispute aurally similar to a high degree and visually similar to an average degree. Considering all the factors relevant to the case, the differences between the signs, despite being found in the beginnings of the signs, are too minor to outweigh the similarities, even for the public with a high degree of attention or for the goods found to be similar to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 077 474.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark, even for the goods found to be similar to a low degree.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ana MUÑIZ RODRIGUEZ

Fabián GARCIA QUINTO

Zuzanna STOJKOWICZ

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.