OPPOSITION DIVISION
OPPOSITION No B 2 775 081
Shenzen Xupaitong Tech Co., Ltd, 408 Unite 1-7, Freedom Rd, Xinan ST47 Area
Baoan District, Shenzhen City Guangdong, People’s Republic of China (opponent),
represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece
(professional representative)
a g a i n s t
HK Focus First Technology Co. Ltd., 8 Standard Road, NW10 6EU London, United
Kingdom (applicant), represented by Eurochina Intellectual Property, Calle San
Mateo 65 – Local 1 "Llopis & Asociados", 03012 Alicante, Spain (professional
representative).
On 03/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 775 081 is upheld for all the contested goods.
2. European Union trade mark application No 15 605 967 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 605 967 for the figurative mark . The opposition is based on
UK trade mark registration No 3 163 464 for the word mark M9s. The opponent
invoked Article 8(1)(a) and (b) EUTMR.
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(a) and
(b) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier
trade mark, the trade mark applied for will not be registered if it is identical to the
earlier trade mark and the goods or services for which registration is applied for are
identical to the goods or services for which the earlier trade mark is protected.
Decision on Opposition No B 2 775 081 page: 2 of 5
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.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Accumulators, electric, for vehicles; video screens; navigation apparatus for
vehicles [on-board computers]; smartphones; tablet computers; materials for
electricity mains [wires, cables]; megaphones; measuring instruments; loudspeakers;
battery chargers; set-top boxes.
The contested goods are the following:
Class 9: Computer keyboards; computer peripheral devices; couplers [data
processing equipment]; mouse [computer peripheral]; printers for use with
computers; notebook computers; navigational instruments; Global Positioning
System [GPS] apparatus; covers for smartphones; audio- and video-receivers;
television apparatus; video recorders; camcorders; portable media players; digital
photo frames; cameras [photography]; battery chargers; batteries, electric.
The relevant factors relating to the comparison of the goods include, inter alia, the
nature and purpose of the goods, 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 goods battery chargers are identically contained in both lists of goods.
The contested batteries, electric is a broad category of goods that includes the
opponent’s accumulators, electric, for vehicles. Further, the opponent’s navigation
apparatus for vehicles [on-board computers] are included in the broad category of the
contested navigational instruments. Since the Opposition Division cannot dissect ex
officio the broad categories of the contested goods, these goods are considered
identical to the opponent’s goods.
The contested goods Global Positioning System [GPS] apparatus overlap with and
are thus identical to the earlier goods navigation apparatus for vehicles [on-board
computers].
The earlier goods set-top box is an information appliance device that generally
contains a TV-tuner input and displays output to a television set and an external
source of signal, turning the received source signal into content in a form that can
then be displayed on the television screen or other display device. Therefore, the
contested audio- and video-receivers overlap with the opponent’s set-top boxes.
Therefore, they are identical.
The applicant’s goods notebook computers basically serve the same purpose as the
opponent’s tablet computer. While both are portable computing devices, a notebook
computer can perform a wider range of tasks as it usually works with a higher
Decision on Opposition No B 2 775 081 page: 3 of 5
powered processor, offers more storage capacity and incorporates a physical
keyboard. However, these goods are essentially of the same nature, have the same
method of use and distribution channels. They also usually coincide in their
manufacturers, are directed at the same public and are in competition. Therefore, the
contested notebook computers are highly similar to the opponent’s tablet computers.
The contested computer keyboards; computer peripheral devices; mouse [computer
peripheral]; printers for use with computers are similar to the opponent’s tablet
computers. They are complementary, share the same distribution channels, are
directed at the same public and may also coincide in their manufacturers.
The contested goods television apparatus; video recorders; camcorders; portable
media players; digital photo frames; cameras [photography] all belong to the group of
apparatus for recording, transmission and reproduction of sound or images. They are
similar to the opponent’s tablet computers. These goods are distributed through the
same commercial channels and directed at the same public. They can be
complementary or are at least used in combination. They also share the same or
similar technology and can therefore originate from the same producers.
The contested couplers [data processing equipment] are devices, such as
transformers, used to couple two or more electric circuits. They can be sold through
the same distribution channels, to the same users and be produced by the same
manufacturers as the opponent’s battery chargers. Therefore, these goods are
similar.
The contested covers for smartphones are accessories for smartphones. They
improve and complete the main product and are usually produced by the same
manufacturers, addressed at the same public and sold through the same distribution
channels. Consumers will therefore expect that both, smartphones and covers for
smartphones, are produced under the control of the same entity. Consequently, these
goods are similar.
b) The signs
M9s
Earlier trade mark Contested sign
The contested sign consists of the exact same combination of letters and numerals
as the earlier mark except for the letter S, which in case of the earlier mark is
registered in lower case. However, as the earlier mark is a word mark, the word as
such is protected and not its written portrayal. Accordingly, this difference is
immaterial and does not prevent a finding of identity between the signs.
Although the contested mark is registered as a figurative mark it is written in normal
typeface with no noticeable stylization. Therefore, the Opposition Division considers
that the differences between the signs are so insignificant that they may go unnoticed
by the relevant public. As a consequence, the signs are identical.
Decision on Opposition No B 2 775 081 page: 4 of 5
c) Global assessment, other arguments and conclusion
The signs were found to be identical. As set out in section a) above, part of the
contested goods are also identical. Consequently, the opposition is upheld based on
Article 8(1)(a) EUTMR for those goods, namely navigational instruments; Global
Positioning System [GPS] apparatus; audio- and video-receivers; battery chargers;
batteries, electric.
Furthermore, the remaining goods, namely computer keyboards; computer
peripheral devices; couplers [data processing equipment]; mouse [computer
peripheral]; printers for use with computers; notebook computers; covers for
smartphones; television apparatus; video recorders; camcorders; portable media
players; digital photo frames; cameras [photography] are similar to some of the
goods covered by the opponent’s earlier mark to an average or high degree. Given
the identity of the signs, there is a likelihood of confusion within the meaning of
Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Helen Louise MOSBACK Elena NICOLÁS GÓMEZ Lucinda CARNEY
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
Decision on Opposition No B 2 775 081 page: 5 of 5
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.