OPPOSITION No B 2 430 570

natcon7 GmbH, Borsteler Chaussee 85-99 a, Haus 6, 22453 Hamburg, Germany (opponent), represented by Hauck Patentanwaltspartnerschaft mbB,
Kaiser-Wilhelm-Straße 79-87, 20355 Hamburg, Germany (professional representative)

a g a i n s t

Bigben Interactive, Société Anonyme, 396/466 rue de la Voyette Crt2, 59273 Fretin, France (applicant), represented by Maxime Chaminade, 59 rue des Petits Champs, 75001 Paris, France (professional representative).

On 14/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 430 570 is partially upheld, namely for the following contested goods:

Class 9:        Fittings for electronic apparatus, namely computer mice; Mouse mats, Computer keyboards, USB (universal serial bus) hubs (transfer units), remote controls for electronic apparatus.

Class 28:        Gaming apparatus for use with television receivers and/or monitors; Interactive educational games for use with television receivers and/or monitors; Games and playthings; Electronic toys; Electronic games; Hand electronic games; Gaming apparatus (other than adapted for use with television receivers); Joysticks for portable electronic games, control apparatus for use with a video game console.

2.        European Union trade mark application No 13 036 728 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 036 728. The opposition is based on, inter alia, international trade mark registration No 992 525 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based, including the earlier IR No 992 525.

In the present case the contested trade mark was published on 12/08/2014.

Earlier trade mark No 992 525 is an international registration designating the EU. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 12/04/2010. Therefore, the request for proof of use is inadmissible.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 992 525.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 7:        Electrical generators, emergency generators, alternating current generators.

Class 9:        Scientific, surveying, photographic, optical, measuring, signalling, checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus and instruments for regulating or controlling electric current; apparatus for recording, transmission or reproduction of sound or images; magnetic data storage media; calculating machines, data processing equipment and computers; monitoring apparatus, emergency power supply, current transformers, switches (circuit breakers), switches, switch components, circuitry, control panels (electricity), chips (integrated circuits).

Class 16:        Written documentation for hardware, software and for the development and implementation of IT systems, namely handbooks, catalogues, instruction manuals and work instructions; printed matter.

Class 37:         Installation, repair and maintenance of network systems (hardware); installation, repair and maintenance of power plants and power grids.

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; energy consulting; configuration and development of energy networks, as far as included in this class; technical design for others in the field of operating plants for the supply of electricity, heat, water and cooling energy; configuration of computer networks by means of software; computer services, namely, creation, servicing, maintenance and updating of data processing programs (softwares).

The contested goods and services are the following:

Class 9:        Fittings for electronic apparatus, namely computer mice; Mouse mats, Computer keyboards, USB (universal serial bus) hubs (transfer units), remote controls for electronic apparatus.

Class 28:        Gaming apparatus for use with television receivers and/or monitors; Interactive educational games for use with television receivers and/or monitors; Games and playthings; Electronic toys; Electronic games; Hand electronic games; Gaming apparatus (other than adapted for use with television receivers); Joysticks for portable electronic games, control apparatus for use with a video game console.

Class 41:        Providing of computer games and video games online, or by other remote communications devices, entertainment in the form of non-downloadable electronic computer games and video games provided via a global computer network and other remote communications devices, entertainment in the form of animations, animated cartoons and illustrations representing computer game and video game characters.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 fittings for electronic apparatus, namely computer mice; computer keyboards, USB (universal serial bus) hubs (transfer units) are similar to the opponent‘s computers in Class 9 as they can coincide in producer, relevant consumer and distribution channels. Furthermore they are complementary.

The contested remote controls for electronic apparatus are similar to the opponent‘s apparatus for recording, transmission or reproduction of sound or images in Class 9 (which are all electronic apparatus) as they can coincide in producer, relevant consumer and distribution channels. Furthermore they are complementary.

The contested mouse mats are similar to a low degree to the opponent’s data processing equipment in Class 9 as they can coincide in relevant consumer and distribution channels. Furthermore they are complementary.

Contested goods in Class 28

The contested gaming apparatus for use with television receivers and/or monitors; interactive educational games for use with television receivers and/or monitors; games; electronic games; hand electronic games; gaming apparatus (other than adapted for use with television receivers) are similar to the opponent’s data processing equipment in Class 9 as they can coincide in producer, relevant consumer and distribution channels.

The contested joysticks for portable electronic games, control apparatus for use with a video game console are considered similar to a low degree to the opponent’s data processing equipment in Class 9 as they can coincide in producer, relevant consumer and distribution channels.

As to the contested playthings; electronic toys, there are many toys and playthings nowadays which combine elements of computing, for example connecting to WIFI. Therefore, compared to the opponent‘s data processing equipment in Class 9, the goods can have a similar nature and can coincide in relevant consumer and distribution channels. They are considered similar to a low degree.

Contested services in Class 41

The contested providing of computer games and video games online, or by other remote communications devices, entertainment in the form of non-downloadable electronic computer games and video games provided via a global computer network and other remote communications devices, entertainment in the form of animations, animated cartoons and illustrations representing computer game and video game characters are considered dissimilar to all the opponent’s goods and services in Classes 7, 9, 16, 37 and 42. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are normally different.

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 similar (to various degrees) are directed at the public at large. The degree of attention will vary between average and high (the latter applies to the goods that have a specialised technological nature and can be quite costly, for example USB hubs or gaming apparatus).  

3. The signs

natcon7
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 element ‘natcon’ of the earlier mark and the element ‘nacon’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The element ‘7’ of the earlier mark will be understood as the number seven. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The applicant argues that the element placed in front of the word ‘nacon’ in the contested sign will be perceived as the capital letter ‘O’ containing an image of a stylized serpent’s head.  The Opposition Division cannot agree with these assertions because the public is not likely to thoroughly analyse the details of the sign. The element at the beginning of the contested sign is not readily perceptible either as a letter ‘O’ or as an image of a serpent’s head. The Opposition Division considers that the public will most likely perceive this element as an abstract figurative element of a circular shape with irregular black and white shading. It is considered that this element has an average distinctiveness.  

Visually, the signs coincide in the sequence of letters ‘na*con’. However, they differ in the additional letter ‘t’ and numeral ‘7’, both in the earlier mark, and in the relatively common stylisation of the script and in the figurative element of the contested sign.

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 ‛NA*CON*’, present identically in both signs. The pronunciation differs in the sound of the letter ‛T’ and the sound produced by pronouncing the numeral 7 in the respective language in the earlier sign, which have no counterparts in the contested mark. For the reasons mentioned above, the consumers are unlikely to pronounce a letter ‘O’ at the beginning of the contested sign, as argued by the applicant.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the numeral ‘7’ in the earlier mark, the other sign has no meaning in that territory. 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.

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 and services are partially similar, partially similar to a low degree 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 are predominantly similar because they share the letters/sounds ‘na*con’ in the same order and differ only in the letter/numeral ‘t’ and ‘7’ in the earlier trade mark. The additional figurative element in the contested sign is not particularly big and does not overshadow the word ‘nacon’ which is written in a fairly common script. Consequently, the overall impressions created by the marks are considered similar.

Account is taken of the fact 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).

The opponent argues that the goods and services in dispute are intended for different groups of consumers, namely consumers of video games from among the general public in the case of the contested mark and professionals in the energy sector in the case of the earlier trade mark. This argument must be dismissed because the task of the Opposition Division is to take into account the goods and services as they appear in the respective lists. There is nothing in the specification of the opponent’s goods found similar (to various degrees) to the contested goods that would limit their use only to professionals in the energy sector.

The applicant refers to previous decisions of the Office where signs containing the same word or letters but stylised in a different way were found visually dissimilar. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings because in those cases either one or both of the marks were highly stylised (in a different manner). In the present case, the earlier mark is a word mark in standard characters, without any stylisation. Although the word ‘nacon’ in the contested sign is stylised, it is nevertheless written in fairly basic script. Consequently, the applicant’s argument must be dismissed.

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 992 525.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar (to various degrees) to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As identity/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 and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• German trade mark registration No 30 2008 028 531.1 ‘natcon7’,
• German trade mark registration No 30 2008 068 577.8
• International trade mark registration No 1 007 411  designating the European Union.

Since these marks are either identical to the one which has been compared or are even less similar to the contested sign due to the presence of additional verbal and figurative elements, and cover essentially the same scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

For the above reasons, and despite an express request of the opponent, it is not necessary to examine the proof of use of the earlier German trade marks because it would not have any impact on the final outcome of the decision.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

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.