OPPOSITION No B 2 791 393

Grigorius Holdings SIA, Juglas Street 31-8, Riga, 1064, Latvia (opponent)

a g a i n s t

Shenzhen XinYe Hong Tong Technology Co. Ltd., Building 11#101, Shui Dou Lao Wei village 1 district, Yousong Road, Longhua, Shenzhen, People’s Republic of China (applicant), represented by Inmaculada Moreno Delgado, Nubla 31, 1, Jaen, Spain (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 791 393 is partially upheld, namely for the following contested goods:

Class 9:         Headphones; semiconductor apparatus; cabinets for loudspeakers; integrated circuit cards [smart cards]; smart cards [integrated circuit cards]; computer peripheral devices; network communication equipment; battery chargers; couplers [data processing equipment]; data processing apparatus; audio- and video-receivers; electronic chip; sound transmitting apparatus; acoustic couplers; sound transmitting apparatus; remote control apparatus; smartglasses; smartwatches; pedometers; theft prevention installations, electric.

2.        European Union trade mark application No 15 563 489 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 15 563 489. The opposition is based on Latvian trade mark registration No M 70 122. 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: Computers; computer software; computer peripherals; electronic data processing equipment; computer hardware; all the parts and accessories.

Class 38: Telecommunications and broadcasting services; transmission of data via computer networks and global information networks; electronic communications network services.

The contested goods are the following:

Class 9: Earplug ware; headphones; cables, electric; wires, electric; semiconductor apparatus; cabinets for loudspeakers; integrated circuit cards [smart cards]; smart cards [integrated circuit cards]; computer peripheral devices; network communication equipment; connections for electric lines; spectacles; battery chargers; sockets, plugs and other contacts [electric connections]; plugs, sockets and other contacts [electric connections]; couplers [data processing equipment]; data processing apparatus; audio- and video-receivers; electronic chip; sound transmitting apparatus; acoustic couplers; sound transmitting apparatus; remote control apparatus; smartglasses; smartwatches; pedometers; theft prevention installations, electric.

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.

Computer peripheral devices and data processing apparatus are identically contained in both lists, albeit in slightly different wording (i.e. computer peripherals versus computer peripheral devices and electronic data processing equipment versus data processing apparatus).

The contested headphones; semiconductor apparatus; integrated circuit cards [smart cards]; smart cards [integrated circuit cards]; network communication equipment; couplers [data processing equipment]; audio- and video-receivers; electronic chip; sound transmitting apparatus; acoustic couplers; sound transmitting apparatus; remote control apparatus; smartglasses; smartwatches; pedometers; theft prevention installations, electric are electrically operated pieces of equipment that accumulate, process and/or store data for different purposes. They are included in the broader category of, or overlap with, the opponent’s electronic data processing equipment, or their parts and accessories. The contested cabinets for loudspeakers are used as containers or holders for the opponent’s computer peripherals, which include loudspeakers. Therefore, these goods are either identical (as they are included in them or overlap with them) or similar in as much as they have the same publics and origins, are offered through the same channels and are complementary.

The contested battery chargers are similar to the opponent’s computers. Batteries are used for storing electricity and are an indispensable part of certain devices, such as laptops or tablet computers. These goods target the same public and are distributed through the same channels. Moreover, they are complementary.

The contested earplug ware consists of small pieces of a soft material to put into someone’s ears to keep out noise, water or cold air. The contested cables, electric; wires, electric; connections for electric lines; sockets, plugs and other contacts [electric connections]; plugs, sockets and other contacts [electric connections] are apparatus and instruments for conducting electricity. The contested spectacles are glasses for correcting defective vision. The opponent’s goods in Class 9 consist of electronic devices, and the opponent’s services in Class 38 are telecommunication services. The contested goods and the opponent’s goods and services have different natures, purposes and methods of use. They do not have the same suppliers or producers. They are not complementary to or in competition with each other. Therefore, the contested services are dissimilar to all of the opponent’s goods and services.

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 relevant goods and services are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of information technology.

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

3. The signs

HANA
Earlier trade mark	Contested sign

The relevant territory is Latvia.

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 is the word mark ‘HANA’. It cannot be ruled out that a part of the public will perceive said word as the genitive form of the word ‘Hans’ – in English ‘Khan’ – indicating an Asian ruler, the supreme ruler of the Tatar tribes, as well as emperor of China, during the Middle Ages. In this case, due to the lack of any connection with the relevant goods, the word will be distinctive. For the rest of the public the word is meaningless and, therefore, also distinctive.

The contested mark is figurative and comprises the word ‘GANA’, in bold black upper case characters. It cannot be excluded that the verbal element of the mark will be understood by a part of the relevant public as the western African country ‘Ghana’. For this part of the public, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. For the rest of the public, the word is meaningless and, thus, also distinctive.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the string of letters/sounds ‘*ANA’ and differ only in their first letters/sounds, namely ‘H’ of the earlier mark and ‘G’ of the contested sign.

Even though consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, as the public reads from left to right, this is not a fixed rule, and in the present case consumers will not overlook the commonality in the remaining three letters of the signs.

Therefore, the signs are visually and aurally highly similar.

Conceptually, part of the relevant public in the relevant territory will see no concept in any of the signs, in which case, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. The evaluation of the likelihood of confusion will be carried out in relation to this part of the public.

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.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar. They target the public at large and professionals, whose degree of attention varies from average to high. The earlier mark has a normal degree of distinctive character for the relevant goods.

The signs are visually and aurally highly similar, because they have three out of four letters in common and for a relevant part of the public, they have no concept that could help them differentiate between the marks. Admittedly, the marks differ in their initial letters, which is where consumers generally tend to focus their attention, and that finding must be taken into account when assessing the likelihood of confusion, but it is only one of the many factors involved in that assessment. In addition, the difference in the stylisation of the contested sign is very limited, and this factor plays a very secondary role in the overall impression given by the mark.

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 identity and similarity between the goods covered by the contested mark and the opponent’s goods, together with their high degree of visual and aural similarity and the facts that, for a significant part of the relevant public, the marks lack concepts that could help consumers differentiate between them, and 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) will lead consumers to confuse the origin of the goods and think that they originate from the same undertaking or from companies with economic links.

Therefore the opposition is partly well founded on the basis of the opponent’s Latvian trade mark registration No M 70 122, and the contested trade mark must be rejected for 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.

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

María Belén IBARRA DE DIEGO

Orsola LAMBERTI

Francesca CANGERI SERRANO

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.