OPPOSITION No B 2 624 156
Kootion Technology Co., Ltd., 3/F, Building 4, Xinjianxing Industrial Park, Baimang, Nanshan District, Shenzhen, The People’s Republic of China (opponent), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative)
a g a i n s t
DongGuan Kotion Electronics Tech Co., Ltd., Factory 35, Sanjiang Industrial Park, Hengli Town, Dongguan, Guangdong, The People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).
On 21/03/2017, the Opposition Division takes the following
1. Opposition No B 2 624 156 is upheld for all the contested goods.
2. European Union trade mark application No 14 560 197 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 560 197. The opposition is based on European Union trade mark registration No 13 126 636. 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.
- The goods
The goods on which the opposition is based are the following:
Class 9: Computer memory devices; batteries, electric; mouse (data processing equipment); computer keyboards; couplers (data processing equipment); portable media players; laptop computers; portable telephones; slide projectors; light-emitting diodes (LED); camcorders; cabinets for loudspeakers; monitoring apparatus, electric; USB flash drives; audio visual recordings; frequency converters; 3D spectacles; electronic visual display units; earphones; cell phone cases; visual monitoring apparatus.
The contested goods are the following:
Class 9: Microphones; batteries, electric; cabinets for loudspeakers; computer peripheral devices; computers; cameras [photography]; materials for electricity mains [wires, cables]; mouse pads; navigational instruments; electronic pens [visual display units]; couplers [data processing equipment]; headphones; in-ear headphones; mouse [computer peripheral]; chargers for electric batteries; computer keyboards; network servers; wireless telephony apparatus; computer operating software; Digital telecommunications apparatus.
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.
Batteries, electric; cabinets for loudspeakers; couplers [data processing equipment]; computer keyboards are identically included in both lists of goods. In addition, despite slightly different wording, the contested wireless telephony apparatus and the opponent’s portable telephones are synonymous and therefore are identical. Similarly, although the contested mouse is qualified as a computer peripheral, while the opponent’s mouse is qualified as data processing equipment, they are the same item and, therefore, are considered identical. Moreover, from the commercial perspective, the contested headphones; in-ear headphones are considered synonymous with the opponent’s earphones and therefore are identical.
The contested computers include, as a broader category, the opponent’s laptop computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.
Similarly, the opponent’s broad category electronic visual display units includes the contested electronic pens [visual display units] and they are consequently identical.
Moreover, since the contested digital telecommunications apparatus includes any kind of hardware used for the purpose of telecommunications that does not use analogue transmission/signals, and bearing in mind that since the 1990s portable telephones have generally used digital technology instead of analogue signals, it is considered that these contested goods include, as a broader category, the opponent’s portable telephones. As the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.
The contested computer peripheral devices are devices that connect to a computer system to add functionality. Examples of typical computer peripheral devices include items such as the opponent’s keyboards. As a result, it is considered that these contested goods include, as a broader category, the opponent’s computer keyboards. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.
The contested microphones are similar to the opponent’s earphones to the extent that they have the same nature, namely they are electronic items, and the same purpose, namely, inter alia, making sounds louder. Furthermore, they are usually produced by the same manufacturers and distributed through the same channels. Finally, they are frequently combined into a single item. Therefore, these goods are highly similar to each other.
The contested chargers for electric batteries are necessary for the proper functioning of the opponent’s batteries, electric and, therefore, they are considered complementary to them. In addition, they have the same main purpose of providing power for electrical items such as a computer. Finally, since the undertakings that sell batteries (alone or together with a device such as a computer) also often sell the corresponding charger, these goods are considered highly similar to each other.
As regards the contested cameras [photography], it is noted that a camera is a piece of equipment that is used, in the case of the cameras in question, for taking photographs. Similarly, the opponent’s camcorders are portable video cameras that record both pictures and sound. Since these goods have the same main purpose and they could also coincide in their usual origin, target consumers and distribution channels, these goods are considered similar to a high degree.
The contested computer operating software is similar to the opponent’s laptop computers, as they can coincide in their producer, end user and distribution channels and they are, furthermore, complementary.
The contested mouse pads are similar to the opponent’s mouse (data processing equipment), as they coincide in their manufacturers, target consumers and distribution channels. There is, furthermore, a functional complementarity between these goods: since mouse pads have no purpose without a mouse, a mouse is necessary for the use of the contested mouse pads. However, as they differ in their nature and intended purpose, it has to be concluded that they are similar.
The opponent’s couplers (data processing equipment) have the purpose of transferring energy from one medium, such as a metallic wire or an optical fibre, to another medium (information extracted from English Oxford Dictionary and Wikipedia). Since the contested materials for electricity mains [wires, cables] are necessary for the opponent’s couplers (data processing equipment), they are considered complementary. They have, furthermore, the same purpose of transferring energy (in particular, electricity). Finally, their target publics overlap, they might be produced by the same manufacturers and they are distributed through the same channels. Therefore, as claimed by the opponent, they are similar.
The contested network servers are computer systems used as a central repository of data and programs shared by users in a network. On the other hand, the opponent’s broad category of computer memory devices includes a wide variety of items, ranging from the RAM of a computer to USB sticks. These goods have the same main purpose, namely data storage, and the opponent’s computer memory devices are necessary for the proper functioning of the contested network servers and so they are complementary. Therefore, they are similar, albeit to a low degree.
Finally, the contested navigational instruments is a broad category that could include goods ranging from compasses to GPS navigation systems. As GPS navigation systems are nowadays usually included in all portable telephones – for which the earlier mark is registered – the contested goods and the opponent’s goods might be considered complementary. To this extent, they might also coincide in their end users. Therefore, they are similar to a low degree.
- 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 various degrees are directed both at average and business consumers.
Professionals have, by definition, a higher degree of attention than the average consumer (12/01/2006, T-147/03, Quantum, EU:T:2006:10, § 62).
The degree of attention of the average consumer of the goods in question may vary from average to high, depending on the technical level of the goods, the frequency of purchase and their price, but it cannot be considered average for all of the goods as put forward by the applicant (05/05/2015, T-423/12, Skype, EU:T:2015:260, § 22; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27; and 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37).
- The signs
Earlier trade mark
The relevant territory is the European Union.
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. Taking account of the above, the Opposition Division finds it appropriate to focus the comparison of the signs on a part of the relevant public, namely, the French-speaking part of the public.
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 a figurative mark made up of a single word, ‘KOOTION’, written in grey upper case letters. The first two letters ‘O’ are interlinked. The word ‘KOOTION’ has no meaning for the relevant goods in the relevant territories. Therefore, it has an average degree of distinctive character.
According to settled case-law, 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the verbal element ‘KOOTION’ is more distinctive than the banal typeface or the grey colour in which it is depicted.
Although, as the applicant claims, the interlinked letters ‘O’ in the middle of the sign might be perceived by part of the public as an infinity symbol or as a pair of glasses, this fact alone is not sufficient to find that these letters dominate the visual impression produced by the earlier mark. Indeed, these letters are not depicted in such a configuration that would make them particularly eye-catching in comparison with the other letters (as they are not, for example, larger or a different colour).
Therefore, it has to be concluded that the earlier mark’s verbal element is its most distinctive element and that the earlier mark does not have an element that could be considered clearly more dominant (visually eye-catching) than other elements.
The contested sign consists of a figurative mark comprising the verbal elements ‘KOTION’ and ‘EACH’ written in black upper case letters, some of them leaning slightly to the right and the final two letters, ‘CH’, leaning to the left. Moreover, as the applicant points out, the horizontal bar of the letter ‘A’ in the element ‘EACH’ is positioned in such a way that this letter could be perceived as a triangle.
The Opposition Division notes that both parties agree that the first element, ‘KOTION’, of the contested sign has no meaning in any of the relevant territories for the relevant goods. Therefore, this element has an average degree of distinctive character.
As regards the word ‘EACH’, referring in English to ‘every (individual of a number) regarded or treated separately’ (information extracted from Oxford English Dictionary), the Opposition Division considers that, although it might be understood as such by the part of the French-speaking public that has a good command of English, such an assumption cannot extend to all or a significant part of this public. In any event, since this word is not related at all to the goods in question, it cannot be considered descriptive of the goods or even as less distinctive than the element ‘KOTION’, as claimed by the opponent. Moreover, it cannot be reasonably considered that the word ‘EACH’ dominates the visual impression produced by the contested sign due to the stylisation of the letter ‘A’, as the applicant claims.
In the light of the above and bearing in mind the abovementioned case-law, it has to be concluded that the contested mark’s verbal elements are more distinctive than their particular graphic depiction (a banal black inclined or italic typeface) and that the contested sign has no elements that can be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the word ‘KO*TION’, which, as stated above, has no meaning and therefore is distinctive for the French-speaking part of the public. However, they differ in the second letter ‘O’ of the earlier mark, ‘KOOTION’, in the second element ‘EACH’ of the contested sign – which has no counterpart in the earlier mark and is equally as distinctive as the other verbal element of that sign – and in the graphical depiction and colours of both signs.
In spite of such differences, the Opposition Division finds it appropriate, in the light of the settled case-law of the Court, to conclude that the signs are visually similar. Indeed, neither the graphical depiction of the marks nor the additional word ‘EACH’ in the contested sign is likely to counteract the visual similarity between the signs resulting from the reproduction, in the first position within the contested sign, of six out of the seven letters of the earlier mark in the same order.
First, the relevant public is likely to focus primarily on the word element(s) as a point of reference (18/02/2004, T-10/03, Conforflex, EU:T:2004:46, § 45). Second, as the opponent mentions, consumers generally pay greater attention to the beginning of a mark than to its end (17/03/2004, T-183/02 and T-184/02, Mundicor, EU:T:2004:79, § 51).
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides, in French, in the sound of the letters ‘KO*TION’ (/kosjɔ̃/), present identically in both signs. In that connection, the Opposition Division notes that, contrary to the applicant’s opinion, the fact that the earlier mark includes a double ‘O’ while the contested sign includes a single ‘O’ does not necessarily lead to a different pronunciation by a French-speaking consumer.
In fact, in accordance with French pronunciation rules, words including a double ‘O’ are pronounced as /o/ (like ‘alcool’), /oo/ (like ‘coopérer’) or /u/ (like ‘scooter’). In all of these cases, the difference between the pronunciation of ‘KOTION’ and ‘KOTIOON’ that might arise is so slight that it will most probably go unnoticed. Indeed, in all cases, the word is pronounced in two syllables and the stress is put on the initial and final parts of the words, resulting in their rhythm and intonation being the same.
The pronunciation of the marks differs, however, in the sound produced by the element ‘EACH’ of the contested sign, which has no counterpart in the earlier mark. Due to its construction, it is likely that a substantial part of the French public would not know how to pronounce this combination of letters. It is therefore possible that the French-speaking public would pronounce it following French pronunciation rules, letter by letter, as (/e/a/sɛ/aʃ) or (/eaʃ/). Nevertheless, as stated above, some might also recognise it as an English word and, therefore, would pronounce it in accordance with English pronunciation rules, in which case it would be pronounced as /iːtʃ/.
Since the earlier mark and the contested sign coincide aurally in their first (and, in the case of the earlier mark, only) element ‘KOTIO*N’ but differ in the element ‘EACH’ of the contested sign, it is considered that, irrespective of the way in which the latter element is pronounced, they are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning as a whole from the perception of the French-speaking public. However, as indicated above, the French-speaking public that has a good command of English might understand the element ‘EACH’ of the contested sign in the meaning of ‘every (individual of a number) regarded or treated separately’. For the remaining part of the French public, this word conveys no meaning.
Therefore, for a part of the public, as neither of the signs has a meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity between the signs. For the remaining part of the public, since one of the signs 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.
- 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.
- 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).
In the present case, the contested goods are partly identical and partly similar to varying degrees to the opponent’s goods.
The earlier mark, ‘KOOTION’, is almost identically included as the first element in the contested sign. As seen above, with the exception of one of the first two letters ‘O’ of the earlier mark, the contested sign includes all the letters of the earlier mark in the same order. Although it has been observed that the graphical depiction of this coinciding element is different in the signs and that the contested sign includes an additional element, ‘EACH’, which has no counterpart in the earlier mark, the figurative elements play a secondary role in the signs and, due to its position at the end of the sign, the second element of the contested sign will be attributed less significance by the French-speaking public than its first element, ‘KOTION’.
Indeed, since consumers generally pay greater attention to the beginning of a mark than to its end, they will pay more attention to the coinciding element ‘KO*TION’ than to the differing element ‘EACH’.
Furthermore, as highlighted earlier, the graphical depiction of the signs will be perceived as merely decorative and not as indicating the commercial origin of the goods (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 45 and the case-law cited therein).
Moreover, 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).
Irrespective of whether the public understands the element ‘EACH’ or not, it is reasonable to consider, as the opponent claims, that the French-speaking consumer could perceive the contested sign as a subcategory or a new line of the opponent’s ‘KO*TION’ products (06/10/2004, T-117/03 to T-119/03 and T-171/03, NLSPORT, NLJEANS, NLACTIVE and NLCollection, EU:T:2004:293, § 51 and the case-law therein cited).
In the light of all the above, the Opposition Division considers it likely that the French-speaking part of the public would confuse the marks in dispute. In particular, having regard to the average degree of distinctiveness of the earlier mark and the identity and/or (for most of the goods, high degree of) similarity between the contested goods and the opponent’s goods, it is considered that the differences between the signs, which are confined to secondary elements and elements of low significance in the signs, are not sufficient to offset the similarity created by the coincidence in the element ‘KO*TION’, even for the goods that are similar to only a low degree and even when the degree of attention of the relevant public is above average.
Considering all the above, there is a likelihood of confusion on the part of the French-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 EU trade mark registration No 13 126 636. It follows that the contested trade mark must be rejected for all the contested goods.
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
Carmen SÁNCHEZ PALOMARES
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.