OPPOSITION No B 2 766 056

Interlemo Holding S.A. (Interlemo Holding AG) (Interlemo Holding Ltd), Chemin des Champs-Courbes 28, 1024 Ecublens VD, Switzerland (opponent), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative)

a g a i n s t

Shenzhen Jin Wenhua sound box Products Co. Ltd.,  2&3/F Block 4 Plant Guihutang St.,Guihua community, Guanlan St., Bao'an Dist., Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 766 056 is partially upheld, namely for the following contested goods:

Class 9:        Blank USB flash drives; Telephone sets; Cabinets for loudspeakers; Headphones; Materials for electricity mains [wires, cables]; Wire connectors [electricity]; Rechargeable batteries; Batteries, electric; Computers; Calculators; Navigational instruments; Video telephones; Smartphones; Cine-cameras; Radio apparatus.

2.        European Union trade mark application No 15 505 282 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 15 505 282 for the word mark ‘Lemus’. The opposition is based on international trade mark registration No 1 219 011 for the word mark ‘LEMO’ designating the EU and international trade mark registration No 1 262 866 for the figurative mark  designating the EU. The opponent invoked Article 8(1)(b) and 8(5) 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:

IR No 1 219 011

Class 9:        Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; round plug connectors; power connectors; connectors (electricity); electrical connectors; insulated electrical connectors; electronic connectors; plug-in connectors; plug connectors; pin and socket connectors; socket connectors; connectors for electronic circuits; coaxial connectors; optical connectors; electric contacts; electric contacts of precious metal; electric wires and cables; optical fibers; insulated copper wire; electric wires; identification sheaths for electric wires; clamps (electricity); telecommunication cables; mineral insulated electric cables; electronic cables; jack cables; optical cables; coaxial cables; cables for electrical signal transmission; cables for electrical or optical signal transmission; cables for optical signal transmission; radio relay cables; sheaths for electric cables; materials for electricity mains (wires, cables); threaded cable fittings for electrical cables; plug adapters; electric plugs; electrical plugs and sockets; converters for electric plugs; antennas; distribution boxes (electricity); anti-interference devices (electricity); branch boxes (electricity); branch boxes (electricity); video cameras; printed circuit boards; USB flash drives.

Class 17:        Insulating splice covers for electrical cables; insulators for cables.

Class 35:        Maintaining computer files containing lists of qualified persons, their details, experience and field of skills; business consulting services for companies in terms of organizing, structuring and operating media centers (television, radio, written press).

Class 37:        Construction consultancy services related to infrastructures intended to support and hold sports, cultural or business events; Construction consultancy services related to electrical power supply, electric cabling, electronic cabling, fiber optic cabling, as well as with regard to all forms of connection to said cabling and its distribution up to the user access and connection points; provision of information relating to the construction of infrastructures, in particular communication and telecommunication infrastructures; maintenance of communications equipment; maintenance and repair of cabling and connections; consultancy services in the construction of medical and hospital infrastructures, in particular with regard to electric, electronic and fiber-optic cabling, as well as with regard to all forms of connection to said cabling and its distribution up to the user access and connection points.

Class 38:        Telecommunications consultancy services, in particular with regard to electronic telecommunications systems intended for interior and exterior information management (for example, results, test timetables, lists of participants) for sporting, cultural or business events; rental, temporary or otherwise, of communications and telecommunications equipment constituting transportable communication centers ready for use on-site.

Class 40:        Assembling components using adhesives; assembling components using ultrasonic welding techniques; custom assembling of materials; assembling and shaping of products at the request of a third party, especially integrated circuits, printed circuit boards and other electronic products; assembling and shaping of products at the request of a third party, especially cables and connectors for electronics, cables and connectors for fiber-optics; cable and hybrid connectors.

Class 42:        Quality control; quality control of products; quality control of products and services; testing, analysis and monitoring of telecommunication signals; testing, analysis and monitoring of telecommunication and navigation signals; evaluation of results from quality control tests conducted on products and services; inspection of products for quality control; provision of temporary use of on-line non-downloadable software for use in broadcast monitoring applications; conducting of quality control tests; conducting of quality control tests on products and services; advisory services relating to technical and scientific monitoring; quality control services for certification purposes; quality control and quality control auditing services in the field of information technology; technical testing and quality control services; scientific, technological, research and design services relating to the field of monitoring and controlling telecommunication or navigation signals and satellites; technical research projects and studies; design and development of computer software and hardware for the production, recording and processing of digital and analog signals; design and development of software and hardware for signal amplification and transmission; design and development of computer software and hardware for processing digital signals; product development; provision of information in the field of product development; industrial testing, development and research; research and development of new products for others; scientific and medical research and development; services in the field of science and technology as well as research and development services relating thereto; development and testing services in the field of engineering; research, development, analysis and advisory services in the field of engineering; services for the research and development of new products for others; products development; technical advice relating to the architecture of a data transmission center (datacenter).

IR No 1 262 866

Class 9:        Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; round plug connectors; power connectors; connectors (electricity); electrical connectors; insulated electrical connectors; electronic connectors; plug-in connectors; plug connectors; pin-and-socket connectors; socket connectors; connectors for electronic circuits; coaxial connectors; optical connectors; electric contacts; electric contacts of precious metal; electric wires and cables; light conducting filaments; insulated copper wire; electric wires; identification sheaths for electric wires; clamps (electricity); telecommunication cables; electric cables with mineral insulation; electronic cables; jack cables; optical cables; coaxial cables; cables for electrical signal transmission; cables for electrical or optical signal transmission; cables for optical signal transmission; radio relay cables; sheaths for electric cables; materials for electricity mains (wires, cables); threaded cable fittings for electrical cables; plug adapters; electric plugs; electrical plugs and sockets; converters for electric plugs; antennas; distribution boxes (electricity); anti-interference devices (electricity); branch boxes (electricity); branch boxes (electricity); video cameras; printed circuit boards; USB flash drives.

Class 37:        Services provided by construction consultants related to infrastructures for accompanying and accommodating sports, cultural or commercial events; services provided by construction consultants related to electrical power supply, electric cabling, electronic cabling, fiber-optic cabling, as well as with regard to all forms of connection to said cabling and its distribution up to the user access and connection points; provision of information relating to the construction of infrastructures, particularly communication and telecommunication infrastructures; maintenance of communication equipment; maintenance and repair of cabling and connections; consultancy services in the construction of medical and hospital infrastructures, in particular with regard to electric, electronic and fiber-optic cabling, as well as with regard to all forms of connection to said cabling and its distribution up to the user access and connection points.

Class 42:        Quality control; quality control of products; quality control of products and services; testing, analysis and monitoring of telecommunication signals; testing, analysis and monitoring of telecommunication and navigation signals; evaluation of results from quality control tests conducted on goods and services; inspection of products for quality control purposes; provision of temporary use of on-line non-downloadable software for use in broadcast monitoring applications; conducting of quality control tests; conducting of quality control tests on products and services; services provided by consultants relating to technical and scientific monitoring; quality control services for certification purposes; quality control and quality control auditing services in the field of information technology; technical testing and quality control services; scientific, technological, research and design services relating to the field of monitoring and controlling telecommunication or navigation signals and satellites; technical research projects and studies; design and development of computer software and hardware for the production, recording and processing of digital and analog signals; design and development of software and hardware for signal amplification and transmission; design and development of computer software and hardware for processing digital signals; product development; provision of information in the field of product development; industrial testing, development and research; research and development of new products for others; scientific and medical research and development; services in the field of science and technology as well as research and development services relating thereto; development and testing services in the field of engineering; research, development, analysis and consultancy services in the field of engineering; services for the research and development of new products for others; development of products; provision of technical advice relating to the architecture of a data transmission center (data center).

The contested goods are the following:

Class 9:        Blank USB flash drives; Telephone sets; Cabinets for loudspeakers; Headphones; Materials for electricity mains [wires, cables]; Wire connectors [electricity]; 3D spectacles; Rechargeable batteries; Batteries, electric; Computers; Calculators; Navigational instruments; Video telephones; Smartphones; Cine-cameras; Electric locks; Radio 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.

The contested blank USB flash drives are included in the broad category of the opponent’s USB flash drives protected by the earlier IR No 1 219 011 in Class 9. Therefore, they are identical.

The contested materials for electricity mains [wires, cables] are identically contained in the list of goods of the earlier IR No 1 219 011 in Class 9.

The contested wire connectors [electricity] are included in the broad category of the opponent’s connectors (electricity) protected by the earlier IR No 1 219 011 in Class 9. Therefore, they are identical.

The contested rechargeable batteries; batteries, electric are included in the broad category of the opponent’s apparatus and instruments for … accumulating … electricity protected by the earlier IR No 1 219 011 in Class 9. Therefore, they are identical.

The contested cine-cameras overlap with the opponent’s video cameras protected by the earlier IR No 1 219 011 in Class 9. Therefore, they are identical.

The contested telephone sets, video telephones, radio apparatus are all devices concerned with the transmission and reproduction of sound and/or images. In this particular context, they are considered similar to the opponent’s apparatus and instruments for conducting … electricity or telecommunication cables protected by the earlier IR No 1 219 011 in Class 9. This is because the quality of cables is one of the parameters which determines the quality of the recording or transmission of sound and/or images (23/11/2011, T-216/10, Monster Rock, EU:T:2011:691, § 25-29). These goods can coincide in the relevant consumer and distribution channels. Furthermore they are complementary.

The contested cabinets for loudspeakers are essential parts of loudspeakers and have a considerable impact on the quality of reproduction of the sound through those loudspeakers. Consequently, for the same reasons as mentioned in the previous paragraph, they are considered similar to the opponent’s apparatus and instruments for conducting … electricity or telecommunication cables protected by the earlier IR No 1 219 011 in Class 9.

The contested smartphones are considered similar to the opponent’s apparatus and instruments for … accumulating … electricity protected by the earlier IR No 1 219 011 in Class 9. Nowadays multi-media electronic devices such as smartphones combine all functionalities such as video camera, mobile phone, mobile computing platform etc. Batteries (an instrument for accumulating electricity) and chargers are indispensable for the use of these devices. The goods compared can coincide in the relevant consumer and distribution channels. Furthermore they are complementary.

The contested headphones are considered similar to the opponent’s video cameras protected by the earlier IR No 1 219 011 in Class 9. As correctly pointed out by the opponent, video cameras are generally equipped with a headphone jack, which users can plug headphones into. The goods compared can coincide in the relevant consumer and distribution channels. Furthermore, they are complementary.

The contested computers are similar to the opponent’s apparatus and instruments for … accumulating … electricity protected by the earlier IR No 1 219 011 in Class 9. The latter goods include for example batteries that are an indispensable part of e.g. a laptop (a type of computer). The goods under comparison can coincide in the relevant consumer and distribution channels. Furthermore, they are complementary.

By the same token, also the contested calculators (which are computing devices performing mathematical or logical operations) are considered similar to the opponent’s apparatus and instruments for … accumulating … electricity protected by the earlier IR No 1 219 011 in Class 9. Batteries are an indispensable part of calculators too.

The contested navigational instruments are similar to the opponent’s scientific, technological … services relating to the field of monitoring and controlling telecommunication or navigation signals and satellites protected by the earlier IR No 1 219 011 in Class 42. This is because they can coincide in producer and relevant consumer. Furthermore they are complementary.

The contested 3D spectacles are special glasses that are worn for watching stereoscopic (three-dimensional) films, videos or pictures. They are used for example in 3D cinemas. The nature and purpose of use of 3D spectacles are so specific that they clearly differentiate the contested 3D spectacles from all the opponent’s goods and services covered by both earlier trade marks that essentially revolve around the area of connectors or cables. These opponent’s goods and services have no point of contact with the contested 3D spectacles. They have a different nature, purpose and method of use. They are neither in competition nor clearly complementary. Moreover, in relation to most of the opponent’s goods and services, the usual commercial origin of the goods/services, the distribution channels and sales outlets are normally different.

The opponent argues that 3D spectacles are similar to the opponent’s video cameras, because these include 3D video cameras and 3D spectacles are indispensable for reviewing the footage recorded by 3D video cameras. In this respect the Opposition Division notes that nowadays 3D video cameras are normally equipped with a LCD panel that allows watching the footage without 3D glasses.  Although 3D spectacles and video cameras could on occasions be sold via the same distribution channels and coincide in the relevant user, this is rather an exception than a rule. The crucial point in this case is that the nature, purpose and method of use of 3D spectacles and video cameras are totally different which make these goods dissimilar from the consumer’s point of view. On the whole, the contested 3D spectacles are dissimilar to all the opponent’s goods and services, namely those covered by the earlier IR No 1 219 011 in Classes 9, 17, 35, 37, 38, 40 and 42 and by the earlier IR No 1 262 866 in Classes 9, 37 and 42.

The contested electric locks are locking devices which operate by means of electric current and are normally mounted on a door and/or a door frame.

The nature, purpose and method of use of electric locks are so specific that they clearly differentiate the contested electric locks from all the opponent’s goods and services covered by both earlier trade marks that essentially revolve around the area of connectors or cables, as already pointed out before. These opponent’s goods and services have no points of contact with the contested electric locks. They have a different nature, purpose and method of use. They are neither in competition nor clearly complementary. Moreover, the usual commercial origin of the goods/services, the distribution channels and sales outlets are normally different.

The opponent asserts that electric locks are similar to the opponent’s video cameras. This is because these goods are often integrated as parts of security and surveillance systems. They have the same purpose (to protect premises against break-ins) and are complementary. Still according to the opponent, these goods are manufactured by the same undertakings, have the same distribution channels and target the same end users.

The Opposition Division cannot agree with these assertions. Although electric locks, as well as video cameras, can be used for security purposes, the concrete purpose of use of these goods is different (to lock a door versus to record and transmit video). Even if these goods can sometimes be combined and used as parts of an integrated security system, this is merely an option and not a rule. The goods can be used separately on their own. Furthermore, the technological nature of the goods compared is quite different which means that their production requires different knowledge and skills. Consequently, they are likely to be produced by different types of undertakings. Although it cannot be ruled out that the goods might be sold through the same distribution channels and target the same end users, this seems to be rather an exception than a rule. To conclude, any potential similarity between electric locks and video cameras is outweighed by the different nature, different concrete purpose of use and different methods of use of these goods. They are considered dissimilar.

On the whole, the contested electric locks are dissimilar to all the opponent’s goods and services, namely those covered by the earlier IR No 1 219 011 in Classes 9, 17, 35, 37, 38, 40 and 42 and by the earlier IR No 1 262 866 in Classes 9, 37 and 42.

All the identical and similar contested goods have been found identical/similar in comparison with the goods covered by the earlier IR No 1 219 011 only. Consequently, the Opposition Division finds it appropriate to continue with the examination of the opposition in relation to this earlier trade mark.

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 are directed either at the public at large or at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised technological nature of the goods, the frequency of purchase and their price.

3. The signs

LEMO	Lemus
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 elements ‘LEMO’ and ‘Lemus‘, forming the marks, have no meaning for the relevant public and are, therefore, distinctive for the goods at stake.

As correctly pointed out by the opponent, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the sequence of letters ‘LEM-’ placed in the prominent position at the beginning of the marks. However, they differ in their endings ‘-O’/’-us’. The marks have the same structure (one word) and their length does not differ much (four letters as opposed to five).

The fact that the earlier trade mark is depicted in upper case and the contested sign in title case has no bearing on the comparison of the marks, because both are word marks. Protection is therefore granted/sought for the word itself, and not for the particular way in which the mark is written.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛LEM-’, present identically in both signs and placed in the prominent position at the beginning of the marks. The pronunciation differs in the sound of the letters ‛-O’ vs ‘–US’ at the end of the marks. The marks have the same number of syllables, namely two, and have a similar 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 claimed that the earlier trade mark enjoys enhanced distinctiveness (reputation), but did not file any evidence in order to prove such a claim.

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

The goods and services have been found partially identical, partially similar and partially dissimilar. The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the relevant public will vary between average and high.

The marks have an average degree of visual and aural similarity and there is nothing to link or differentiate the marks conceptually. Consequently, the overall impression created by the marks is similar.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s international trade mark registration No 1 219 011.

It follows from the above that 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 to the goods and services of both earlier trade marks. As identity or 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, taking into account both earlier trade marks.

Given that the opposition is not entirely successful under Article 8(1)(b) EUTMR for all the contested goods, it is necessary to further examine the remaining ground of the opposition, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 14/09/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 19/01/2017.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based. In addition, in its observations of 13/01/2017, the opponent stated that it had elected not to substantiate its opposition on the basis of Article 8(5) EUTMR.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

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

Chantal VAN RIEL

Vít MAHELKA

Lucinda CARNEY

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.