OPPOSITION No B 2 649 716

Conlance GmbH, Werner-von-Siemens-Straße 6, 86159 Augsburg, Germany (opponent), represented by Rau & Rau, Widenmayerstr. 28, 80538 München, Germany (professional representative)

a g a i n s t

Draco Distribution Ltd, 3/2 89 Hill Street, Glasgow G3 6NZ, United Kingdom (applicant), represented by Judith Anne Tonner, 272 Bath Street, Glasgow G2 4JR, United Kingdom (professional representative).

On 08/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 649 716 is partially upheld, namely for the following contested goods:

Class 9:         Mobile and cellular phone cases, covers, carriers, holders, mounts and straps; mobile and cellular phone accessories; publications in electronic format, downloadable electronic publications; blank USB sticks and flash drives; cases, covers, carriers, holders, mounts and straps for audio, video and media players; headsets, headphones, earphones, speakers and in-ear headphones; cases, covers, carriers, holders, mounts and straps for computers, laptops and tablets

2.        European Union trade mark application No 14 664 494 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 some of the goods of European Union trade mark application No 14 664 494, namely against all the goods in Class 9. The opposition is based on international trade mark registration No 1 215 101 designating the European Union. 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:        Magnetic data carriers; CDs, DVDs and other digital recording media; data processing equipment, computers; computer software.

Class 38:        Telecommunications, especially by providing access to platforms and portals on the Internet.

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; hosting of web pages in the Internet for third parties.

The contested goods are the following:

Class 9:        Mobile and cellular phone cases, covers, carriers, holders, mounts and straps; mobile and cellular phone accessories; glasses and eyewear; cords, covers and cases for glasses and eyewear; frames for glasses and eyewear; publications in electronic format, downloadable electronic publications; blank USB sticks and flash drives; cases, covers, carriers, holders, mounts and straps for audio, video and media players; headsets, headphones, earphones, speakers and in-ear headphones; cases, covers, carriers, holders, mounts and straps for computers, laptops and tablets; downloadable mobile and cellular phone ringtones.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 blank USB sticks and flash drives are included in the broad category of the opponent’s data carriers. Therefore, they are considered identical.

The contested publications in electronic format, downloadable electronic publications are similar to the opponent’s computer software, since they may coincide in producer, consumers and distribution channels. Furthermore, they are complementary.

The contested cases, covers, carriers, holders, mounts and straps for computers, laptops and tablets are similar to the opponent’s computers. It is clear that a link exists between these goods and they can be considered complementary to each other. These goods can be produced by the same manufacturers, and they can be sold through the same distribution channels. Moreover, they target the same relevant public.

The contested cases, covers, carriers, holders, mounts and straps for audio, video and media players are accessories specifically intended for use with audio, video and media players. The opponent’s CDs, DVDs and other digital recording media are carriers of data on an optically readable medium such as a DVD player. These goods are complementary, as the use of a DVD may be quickly compromised if it is not protected in its own case. In addition, these goods are often sold through the same distribution channels. Finally, they target the same customers, users of optical data carriers. Therefore, they are similar.

The contested headsets, headphones, earphones, speakers and in-ear headphones are also accessories specifically intended for use with audio, video and media players. The opponent’s CDs, DVDs and other digital recording media are carriers of data on an optically readable medium such as a DVD player. These goods are complementary. In addition, these goods are often sold through the same distribution channels. Finally, they target the same customers, users of optical data carriers. Therefore, they are similar.

The opponent’s telecommunications services in Class 38 are services that allow people to communicate by remote means. It is common for companies offering certain services to offer related goods at the same time. For instance, companies offering telecommunications services frequently offer mobile phones and all of their accessories, such as the contested mobile and cellular phone cases, covers, carriers, holders, mounts and straps; mobile and cellular phone accessories. Therefore, these contested goods are similar to a low degree to the services of the opponent. Although the nature of the contested goods and that of the services of the opponent are different, the goods and services can be used, broadly speaking, for the same purpose (i.e. telecommunications) and can coincide in their distribution channels. They can target the same consumers and come from the same companies.

The contested glasses and eyewear; cords, covers and cases for glasses and eyewear; frames for glasses and eyewear have the intended purpose of covering, and thus protecting, an item that is specified by the type of case. For example, cases for sun glasses have the intended purpose of covering, protecting and carrying sunglasses. These goods are rudimentary and do not possess any internal or self-governing technology. In contrast, the opponent’s goods in Class 9 are either electronic devices, which perform a function under electrical control, or computer programs, comprising routines and symbolic languages that control the functioning of hardware and direct its operation. They are constructed from different materials and have an artificially intelligent effect or output. They are, therefore, dissimilar from the goods in Class 9 of the opponent’s earlier mark.

The contested downloadable mobile and cellular phone ringtones are also dissimilar to all the opponent’s goods, as they differ from the opponent’s goods in nature, purpose, distribution channels, sales outlets, producers or methods of use.

The opponent’s services in Class 38 are essentially telecommunication services. Telecommunication services allow people to communicate with one another by remote means. The goods in Class 9 found to be dissimilar also differ from telecommunication services in nature, purpose, distribution channels, sales outlets, producers or the method of use. The services in Class 38 are dissimilar to the remaining goods in Class 9.

The rest of the contested goods are also dissimilar to the services in Class 42 on which the opposition is based, since they differ in their natures, methods of use, distribution channels and points of sale. They are neither complementary nor in competition, and they come from different kinds of 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 and at business customers with specific professional knowledge or expertise.

The degree of attention will therefore vary from average to high, depending on the price and sophistication of the purchased goods.

3. The signs

SKILLSTAFF	KILLSTAR
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The marks are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as the Spanish-speaking part.

Visually, both signs are word marks. The signs coincide in the string of letters ‘KILLSTA’, being seven letters out of eight in the contested mark and out of 10 in the earlier mark. However, they differ in the first letter, ‘S’, and the last letters, ‘FF’, of the earlier mark, and in the last letter, ‘R’, of the contested mark.

The fact that the first seven letters of the contested sign coincide with most of the first part of the earlier mark, with the exception of the letter ‘S’, is particularly relevant given that consumers generally tend to focus on the first element of a sign when confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign the one that first catches the attention of the reader.

Further, the length of the signs and the fact that they coincide in seven letters are also pertinent, since these factors may influence the effect of the differences between them. Indeed, the longer signs are, the less aware the public is of the differences between them, a fact that holds true in the current circumstances. This offsets the differences arising from the additional letter in first position of the earlier mark and the differences in the last letters of the marks, and on the whole the signs are visually similar to an average degree.

Aurally, the pronunciations of the signs coincide in the sound of the letters ‘KILLSTA’, present in both signs, and to that extent the signs are aurally similar. The pronunciations differ in the sound of the letters ‘S’ and ‘FF’ of the earlier mark, and in the sound of the letter ‘R’ of the contested mark. These differences, however, are not sufficient to overcome the overall similarity of rhythm and intonation. Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 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

To summarise, the contested goods are partly similar to different degrees, partly identical and partly dissimilar to the opponent’s goods and services, and the degree of attention varies from average to high.

The Court has stated that 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.

The signs are visually similar to the extent that they coincide in the string of letters ‘KILLSTA’, being seven letters out of eight in the contested mark and out of 10 in the earlier mark. However, they differ in the first letter, ‘S’, and the last letters, ‘FF’, of the earlier mark, and in the last letter, ‘R’, of the contested mark. The Opposition Division opines that the differences between the marks are not sufficient to counteract their similarities, and that, consequently, the public could believe that the goods come from the same undertaking or from economically-linked undertakings.

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).

Bearing the above in mind, coupled with the fact that consumers rarely examine marks side by side, relying therefore on their imperfect recollection, the Opposition Division finds that there is a likelihood of confusion in view of the similarities between the signs and the identity and similarity between some of the goods. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 215 101 designating the European Union. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees 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.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DINU

Cristina CRESPO MOLTO

Loreto URRACA LUQUE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.