OPPOSITION DIVISION
OPPOSITION No B 2 615 865
Verbis Alfa Sp. z o.o., ul. Zawiła, nr 65, lok. L, 30-390 Kraków, Poland, EasyPack
Sp. zo. o., ul. Malborska 130, 30 624 Kraków, Poland, Inpost S.A., ul. Malborska
130, 30 624 Kraków, Poland (opponents), represented by Kancelaria Patentowa Dr
W. Tabor SP.J., Ul. Mazowiecka 28a/8-9, 30-019 Kraków, Poland (professional
representative)
a g a i n s t
Dongguan Baike Electronic Co. Ltd., Room 615, 6F, Building A, No.12 West
Guanzhang Road, Baiguodong, Zhangmutou Town, Dongguan 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 18/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 615 865 is partially upheld, namely for the following
contested goods
Class 9: Computer keyboards; computer peripheral devices; couplers [data
processing equipment]; monitors [computer hardware]; bags adapted
for laptops; computer hardware; headphones; projection apparatus.
2. European Union trade mark application No 14 487 631 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 14 487 631 for the figurative mark ), namely
against some of the goods in Class 9. The opposition is based on, inter alia,
European Union trade mark registration No 12 971 453 for the figurative mark
). The opponent invoked Article 8(1)(b) EUTMR.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
Decision on Opposition No B 2 615 865 page: 2 of 9
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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 12 971 453.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Computer apparatus and programs for operating of electronic messaging
systems via text messages or the internet, automated teller machines
(ATM), computer software, including computer software for creating,
management, promoting and advertising of online shops, including shops
operating within social networking websites, computer software to enable
uploading, downloading, accessing, sending, displaying, marking, blogging,
streaming, linking, sharing or otherwise providing electronic media or
information via computer and communications networks; computer software
for use as an application programming interface (API) for computer software
which facilitates online services for social networking, creating of social
networking applications, creating of websites, creating of profiles on social
networking websites, creating of online shops, including online shops
relating to social networking portals and profiles and creating of software for
searching, uploading, downloading, obtaining access to and management of
data; computer software in the form of computer software development
tools; programs for computers and computer systems for arranging,
conducting and managing sales processes, including presentation, offering
offers, comparing offers, information relating to the organisation of bidding
and auctions and programs for organisation, operating and managing the
process of awarding and conclusion of contracts of sale, together with the
organisation, operation and management of the process of regulation of
receivables from the conclusion of such agreements and the process of
providing services or goods purchased, electronic data carriers of all kinds,
included in class 9, data carriers (magnetic or optical); access cards;
magnetic tapes; magnetic tapes for computers; recording discs; floppy
disks; disks, magnetic; optical discs; compact discs; record data carriers in
the form of computer memories; magnetic gift cards and discount cards;
computers, including portable computers and other data processing
equipment; all the aforesaid goods for use in relation to postal services,
courier services and long-distance delivery of goods.
The contested goods are the following:
Decision on Opposition No B 2 615 865 page: 3 of 9
Class 9: Electrical adapters; computer keyboards; computer peripheral
devices;couplers [data processing equipment]; monitors [computer
hardware]; bags adapted for laptops; computer hardware; cabinets for
loudspeakers; headphones; projection apparatus; sockets, plugs and other
contacts [electric connections].
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘including’, used in the opponent’s list of goods, indicates that the specific
goods are only examples of items included in the category and that protection is not
restricted to them. In other words, it introduces a non-exhaustive list of examples
(09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 computer hardware overlaps with the opponent’s computers, including
portable computers and other data processing equipment; all the aforesaid goods for
use in relation to postal services, courier services and long-distance delivery of
goods. Therefore, they are identical.
The contested computer keyboards; computer peripheral devices; monitors
[computer hardware]; couplers [data processing equipment]; headphones are used in
combination with computers to add functionality. They share the same distribution
channels and are usually manufactured by the same undertakings. They are also
directed at the same public. Therefore, the abovementioned goods are similar to the
opponent’s computers, including portable computers and other data processing
equipment; all the aforesaid goods for use in relation to postal services, courier
services and long-distance delivery of goods.
The contested projection apparatus is apparatus for the reproduction of images that
consists of an optical device that projects an image (or moving images) onto a
surface. These goods and computers can share the same distribution channels, may
be addressed at the same end user and can be manufactured by the same
producers. Therefore, projection apparatus is similar to the opponent’s computers,
including portable computers and other data processing equipment; all the aforesaid
goods for use in relation to postal services, courier services and long-distance
delivery of goods.
The contested bags adapted for laptops are similar to the opponent’s computers,
including portable computers and other data processing equipment; all the aforesaid
goods for use in relation to postal services, courier services and long-distance
delivery of goods as these can coincide in end user and distribution channels.
Furthermore they are complementary.
However, the remaining goods in this class, namely cabinets for loudspeakers;
electrical adapters; sockets, plugs and other contacts [electric connections] are
considered dissimilar to the opponent’s goods.
Decision on Opposition No B 2 615 865 page: 4 of 9
The contested cabinets for loudspeakers are enclosures in which speaker drivers
and associated electronic hardware, such as crossover circuits and amplifiers, are
mounted.
The contested electrical adapters; sockets, plugs and other contacts [electric
connections] are all either electrical power sources or adapters i.e., devices that
supply electrical energy to an output, respectively they regulate the voltage to
eliminate spikes and surges common in most electrical systems.
On the contrary, the opponent’s goods consist of, among others, computers,
computer software and programs, data processing equipment in Class 9, all of them
for use in relation to postal services, courier services and long-distance delivery of
goods.
The fields of activities where the goods under comparison are involved are different:
the contested goods are casings for loudspeakers or concern electricity, while the
opponent’s goods are computer and data processing goods for use in a specific field.
All these goods are manufactured by different undertakings and distributed through
different trade channels. Finally although the opponent’s goods might theoretically be
used in conjunction with some of the contested goods, this is not enough to find a
similarity between them. Therefore, these goods are dissimilar.
b) 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 as well as at business customers with specific professional knowledge
or expertise.
The degree of attention may vary from average (for example in case of bags adapted
for laptops) to high (for example in relation to computer hardware, computers),
depending on the specialised nature of the goods, the frequency of purchase and
their price.
c) The signs
Earlier trade mark Contested sign
The relevant territory is the European Union.
Decision on Opposition No B 2 615 865 page: 5 of 9
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). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The common element ‘easy’ is meaningful in certain territories, for example in those
countries where English is spoken and understood and has no meaning in others, for
example in Poland. Consequently, the Opposition Division finds it appropriate to
focus the comparison of the signs on the part of the public in territories where it has
no meaning, such as on the Polish-speaking part of the relevant public.
The earlier mark is a figurative mark composed of the verbal element ‘easypack’ in
grey standard lower case letters, preceded by a figurative device in yellow, which
seems to be a waning moon with rays of light on its left side.
The contested sign is a figurative mark composed of the verbal element ‘EasyPAG’ in
standard letters. The first letter ‘E’ is a capital letter depicted in white over a grey
shaded circular device. The letters ‘asy’ are depicted in black lower case letters. The
letters ‘PAG’ are depicted in grey upper case letters.
The earlier mark’s verbal element ‘easypack’ has no meaning for the relevant public
and is, therefore, distinctive. The figurative element of the earlier sign is of average
distinctiveness in relation to the relevant goods, as it does not describe or evoke any
of their characteristics. Nevertheless, it should be noted that when signs consist of
both verbal and figurative components, 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).
The element ‘EasyPag’ of the contested sign has no meaning for the relevant public
and is, therefore, distinctive while the figurative element is of a purely decorative
nature and is, therefore, weak.
None of the signs has any element that could be considered clearly more dominant
(more eye-catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘easypa’, that is in six out of
eight and seven letters respectively, located in the same position. They differ in the
end of their word elements, namely in the letters ‘ck’ versus ‘G’, in the stylization of
these elements and their figurative elements, which, as seen above, will have less
impact on consumers than the verbal elements of the marks.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛easypa’,
present identically in both signs. It differs in the sound of the letters ‛ck’ of the earlier
Decision on Opposition No B 2 615 865 page: 6 of 9
mark and the letter ‘g’ of the contested sign. However, the pronunciation of these
letters is very similar and the difference may be overheard, also considering that it is
at the end of the signs. Moreover, as both signs consist of four syllables, they have a
very similar rhythm, intonation and melody when pronounced. The differing figurative
elements are of no relevance when assessing the aural similarity.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the verbal elements of the signs in comparison has a
meaning for the public in the relevant territory. However, the marks differ conceptually
on account of the figurative element of the earlier sign, which will be perceived as a
waning moon with rays of light. Since one of the signs (the contested mark) will not
be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the
factors relevant to the circumstances of the case; this appreciation depends on
numerous elements and, in particular, on the degree of recognition of the mark on the
market, the association that the public might make between the two marks and the
degree of similarity between the signs and the goods and services (11/11/1997,
C-251/95, Sabèl, EU:C:1997:528, § 22).
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).
In the present case, the contested goods are partially identical, partially similar and
partially dissimilar.
The similarities between the signs result from the coincidence in the six letters
‘easypa’, placed at the same position in each of the signs. The differences are in their
stylisation, the signs’ last letter/s, ‘ck’ and ‘G’, respectively and their figurative
elements. The figurative element and stylisation of the signs are not sufficient to
Decision on Opposition No B 2 615 865 page: 7 of 9
overshadow or to hide the relevant verbal elements, which as seen above, have a
stronger impact on the consumer.
In addition, the difference between the sounds of these signs when pronounced is
not striking due to their identical beginnings and the fact that the different letters are
placed at the sign’s ends.
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).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).
In view of the foregoing, the Opposition Division considers that the differences
between the signs are not sufficient to enable the consumers to safely distinguish
between the marks at issue and therefore they are likely to believe that the goods in
question originate from the same undertaking or from economically related
undertakings, even considering that the degree of attention of the relevant
consumers in relation to some of the goods at issue may be higher than average.
Considering all the above, there is a likelihood of confusion on the part of the Polish–
speaking part 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 12 971 453.
It follows from the above that the contested trade mark must be rejected for all the
goods found to be identical or similar to those of the earlier trade mark.
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) EUTMR, the opposition based
on this article and directed at these goods cannot be successful.
The opponent has also based its opposition on the earlier Polish trade mark
registration No 294 365 for the figurative mark . The goods of
this mark on which the opposition is based are the following:
Class 9: Electronic devices including post office boxes for receiving sorting and
dispensing packages and consignments and parts thereof; computer apparatus and
programs for operating of electronic messaging systems via text messages or the
internet, automated teller machines (ATM), computer software, including computer
software for creating, management, promoting and advertising of online shops,
including shops operating within social networking websites, computer software to
enable uploading, downloading, accessing, sending, displaying, marking, blogging,
streaming, linking, sharing or otherwise providing electronic media or information via
computer and communications networks; computer software for use as an
application programming interface (API) for computer software which facilitates
online services for social networking, creating of social networking applications,
Decision on Opposition No B 2 615 865 page: 8 of 9
creating of websites, creating of profiles on social networking websites, creating of
online shops, including online shops relating to social networking portals and profiles
and creating of software for searching, uploading, downloading, obtaining access to
and management of data; computer software in the form of computer software
development tools; programs for computers and computer systems for arranging,
conducting and managing sales processes, including presentation, offering offers,
comparing offers, information relating to the organisation of bidding and auctions and
programs for organisation, operating and managing the process of awarding and
conclusion of contracts of sale, together with the organisation, operation and
management of the process of regulation of receivables from the conclusion of such
agreements and the process of providing services or goods purchased, electronic
data carriers of all kinds, included in class 9, data carriers (magnetic or optical);
access cards; magnetic tapes; magnetic tapes for computers; recording discs; floppy
disks; disks, magnetic; optical discs; compact discs including audio video discs CD-
ROM, CD-R, CD-RW, DVD, DVD-R, DVD+R, DVD-RW, HD DVD; record data
carriers in the form of computer memories; magnetic gift cards and discount cards;
computers, including portable computers and other data processing equipment.
The only relevant difference to the goods of the earlier European Union trade mark
registration No 12 971 453, on which the opposition was based, is inclusion of the
electronic devices including post office boxes for receiving sorting and dispensing
packages and consignments and parts thereof. These goods are clearly dissimilar to
the contested cabinets for loudspeakers; electrical adapters; sockets, plugs and
other contacts [electric connections]. The same reasoning as explained above in the
part a) of this decision (concerning comparison of the goods) applies mutatis
mutandis here.
Therefore, the outcome cannot be different with respect to goods for which the
opposition has already been rejected. Hence, no likelihood of confusion exists with
respect to those goods.
Decision on Opposition No B 2 615 865 page: 9 of 9
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some 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
Tobias KLEE Renata COTTRELL Martin EBERL
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.