OPPOSITION No B 2 533 779

G-Star Raw C.V., Joan Muyskenweg 39, 1114 AN Amsterdam-Duivendrecht, Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative)

a g a i n s t

Shenzhen Feile Innovation Culture Technology Co. Ltd., F15-104 Block, F1-F21 Commercial Street, Baoyuan Road, Shenzhen, People’s Republic of China (applicant), represented by A.BRE.MAR. S.R.L., Via Servais 27, 10146 Torino, Italy (professional representative).

On 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 533 779 is partially upheld, namely for the following contested goods:

Class 9:        Computer software, recorded; monitors [computer hardware]; data processing apparatus; electrified rails for mounting spotlights; filters for ultraviolet rays, for photography; photographic viewfinders; carriers for dark plates [photography]; flashlights [photography]; stands for photographic apparatus; armatures [electricity]; remote control apparatus; cameras [photography]; speed measuring apparatus [photography]; downloadable computer application software; tablet computers; smartphones; tripods for cameras.

2.        European Union trade mark application No 13 654 165 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 654 165. The opposition is based on European Union trade mark registration No 11 493 103. 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:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 12:        Vehicles; apparatus for locomotion by land, air or water.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; design of fashion articles; product development; interior design and decoration.

The contested goods and services are the following:

Class 9:        Computer software, recorded; monitors [computer hardware]; data processing apparatus; electrified rails for mounting spotlights; filters for ultraviolet rays, for photography; photographic viewfinders; carriers for dark plates [photography]; flashlights [photography]; stands for photographic apparatus; armatures [electricity]; remote control apparatus; cameras [photography]; speed measuring apparatus [photography]; downloadable computer application software; tablet computers; smartphones; tripods for cameras.

Class 12:        Remote control vehicles, other than toys; cars; vehicles for locomotion by land, air, water or rail; aeronautical apparatus, machines and appliances; aeroplanes; electric vehicles; bicycles; connecting rods for land vehicles, other than parts of motors and engines; aircraft; anti-theft devices for vehicles.

Class 42:        Research and development for others; technical project studies; material testing; industrial design; architectural consultation; styling [industrial design]; information technology consulting services; providing search engines for the internet; computer software design; consultancy in the design and development of computer hardware; monitoring of computer systems by remote access; creating and maintaining web sites for others; remote data backup; electronic data storage.

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 software, recorded; downloadable computer application software are included in the opponent’s computer software. Therefore, they are identical.

The contested monitors [computer hardware] are similar to the opponent’s computers in Class 9, as they can have the same producer, relevant consumers and distribution channels. Furthermore, they are complementary.

The contested data processing apparatus includes, as a broader category, or overlaps with the opponent’s apparatus for recording, transmission or reproduction of sound or images. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested electrified rails for mounting spotlights; filters for ultraviolet rays, for photography; photographic viewfinders; carriers for dark plates [photography]; flashlights [photography]; stands for photographic apparatus, cameras [photography]; speed measuring apparatus [photography]; tripods for cameras are included in the broader category of the opponent’s photographic, cinematographic, optical apparatus and instruments. They are considered identical.

The contested armatures [electricity] are included in or overlap with the opponent’s apparatus and instruments for conducting, switching, transforming, and accumulating, regulating or controlling electricity. These goods are also identical.

The contested remote control apparatus is similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images in Class 9 (which is all electronic apparatus), as they can have the same producer, relevant consumers and distribution channels. Furthermore, they are complementary.

The contested tablet computers are mobile PCs (personal computers), typically with a mobile operating system and LCD touchscreen display processing circuitry, and a rechargeable battery in a single thin, flat package. They are included in the broad category of the opponent’s computers. Therefore, they are identical.

The contested smartphones are mobile phones (also known as cell phones or cell mobiles) with an advanced mobile operating system that combines features of a personal computer operating system with other features useful for mobile or handheld use. The opponent’s computers are devices that can be instructed to carry out an arbitrary set of arithmetic or logical operations automatically. Therefore, these goods can have the same producer, consumers, distribution channels and method of use. Furthermore, they are in competition. Therefore, they are similar to a high degree.

Contested goods in Class 12

The contested remote control vehicles, other than toys; cars; vehicles for locomotion by land, air, water or rail; aeroplanes; electric vehicles; bicycles; aircraft are included in the broad category of, or overlap with, the opponent’s vehicles. Therefore, they are identical.

The contested aeronautical apparatus, machines and appliances are included in the broad category of the opponent’s apparatus for locomotion by land, air or water. Therefore, they are identical.

The contested connecting rods for land vehicles, other than parts of motors and engines; anti-theft devices for vehicles are similar to the opponent’s apparatus for locomotion by land, air or water. The goods are complementary; they can have the same producer, distribution channels and the target public.

Contested services in Class 42

The contested computer software design; consultancy in the design and development of computer hardware are synonymous with the opponent’s design and development of computer hardware and software; they are, therefore, identically contained in both lists of goods and services.

The contested research and development for others is included in the broad category of the opponent’s scientific and technological services and research and design relating thereto; industrial analysis and research services. Therefore, they are considered identical.

The opponent’s scientific and technological services and research and design relating thereto; industrial analysis and research services are services of a technical nature oriented to research and the creation of studies. They are carried out by engineers or technical experts, who draw up reports and projects after process analysis, and are based on a number of techniques. They have the same nature and purpose as the contested technical project studies; material testing; industrial design; architectural consultation; styling [industrial design], which may be provided by the same undertakings. Furthermore, they are complementary. Therefore, they are considered similar.

The contested information technology consulting services; providing search engines for the internet; monitoring of computer systems by remote access; creating and maintaining web sites for others; remote data backup; electronic data storage are technical services related to programming and related rental, consultancy, advisory, assistance and information services. They are considered similar to the opponent’s design and development of computer hardware and software, since they can have the same origin and relevant consumers, can be distributed through the same channels and can be complementary to each other.

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 at issue are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high, depending on the frequency of their purchase, their particular characteristics and their price.

3. The signs

RAW
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-, Polish- and Spanish-speaking parts of the public in considering the potential impact of the meaning of the verbal elements in the marks in relation to the contested goods and services for this part of the public.

The earlier mark is a word mark, ‘RAW’. This word has no meaning for the relevant public and will be perceived as a fanciful term with an average degree of distinctiveness in relation to the relevant goods and services.

The contested sign is a figurative mark containing the words ‘FILM RAW’ in shadowed upper case letters that are stylised in various ways. Above these word elements is a figurative element composed of a circle containing two slightly curved lines that could resemble a highly stylised letter ‘F’. With regard to the stylisation of the letters and the figurative elements of the contested sign, 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 word element ‘FILM’ will be associated by the relevant public with a story or event recorded by a camera as a set of moving images or a thin flexible strip of plastic or other material coated with light-sensitive emulsion for exposure in a camera, used to produce photographs or motion pictures. In relation to the goods in Class 9, this word element is non-distinctive. For the remaining goods and services in Classes 12 and 42, its distinctiveness is normal.

Neither of the marks has elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the letters ‘RAW’. They differ in the word ‘FILM’ and in the figurative element of the contested mark. However, taking into account the non-distinctive character of the word element ‘FILM’ for the goods in Class 9, the signs are considered similar to an average degree. For the goods and services in Classes 12 and 42, for which the word element ‘FILM’ is distinctive, the visual similarity is considered lower than average.

Conceptually, although the relevant public will perceive the meanings of the word element ‘FILM’ of the contested sign, as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, the concepts conveyed by the word ‘FILM’ are of minimal relevance given its non-distinctive character for the goods in Class 9.

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

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).

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.

The goods and services under comparison are identical or similar (to varying degrees). The distinctiveness of the earlier mark is normal.

In relation to the goods in Class 9, the signs are visually and aurally similar to an average degree on account of the coinciding element ‘RAW’. Conceptually, the signs are not similar. However, due to the descriptive meaning of the word element ‘FILM’, this element has substantially less importance in the perception of the contested mark by the relevant public than the element ‘RAW’. Consequently, the Opposition Division is of the opinion that, when encountering the contested sign on identical or similar goods in Class 9, consumers (even professionals displaying a heightened degree of attention) will make an association with the earlier mark ‘RAW’ and will perceive the contested sign merely as a version of it and will assume that the goods are from the same undertaking or economically-linked undertakings.

In relation to the remaining goods and services in Classes 12 and 42, the signs are visually and aurally similar to a lower than average degree, as the word element ‘FILM’ has a significant impact on the perception of the contested mark. Conceptually, the signs are not similar. Taking into account the additional figurative elements, which will not go completely unnoticed even though their impact is reduced, as stated above in section c) of this decision, the coinciding element ‘RAW’ is not sufficient to lead to a likelihood of confusion on the part of the public for these goods and services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Hungarian-, Polish- and Spanish-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 493 103 for the goods in Class 9. 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.

The opposition is not successful insofar as the goods and services in Classes 12 and 42 are concerned. In relation to these goods and services, the opposition must be rejected.

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

Loreto URRACA LUQUE

Arkadiusz GORNY

Judit NÉMETH

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.