OPPOSITION No B 2 544 362
Roccat GmbH, Otto von Bahrenpark, Paul-Dessau-Straße 3g, 22761 Hamburg, Germany (opponent), represented by Nachtwey IP Rechtsanwälte, Buschhöhe 10, 28357 Bremen, Germany (professional representative)
a g a i n s t
Rokid Corporation Limited, 4/F Willow House, Cricket Square, Grand Cayman 1112, Cayman Islands (applicant), represented by Loyer & Abello, 9, rue Anatole de la Forge, 75017 Paris, France (professional representative).
On 16/03/2017, the Opposition Division takes the following
1. Opposition No B 2 544 362 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 824 362, namely against some of the goods in Classes 9 and 28. The opposition is based on, inter alia, European Union trade mark registration No 5 568 878. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
The applicant requested that the opponent submit proof of use of European Union trade mark registration No 5 568 878 on which the opposition is based.
However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 European Union trade mark registration No 5 568 878.
- The goods
The goods on which the opposition is based are the following:
Class 9: Apparatus for recording, transmission or reproduction of sound or images; data processing equipment and computers, including notebooks and PDAs (organisers and handheld computers); control mice and mousepads, computer mice, graphics tablets, keyboards, keypads.
The contested goods are the following:
Class 9: Data processing apparatus; computers; monitors (computer hardware); sound transmitting apparatus; camcorders; chips (integrated circuits); remote control apparatus.
Class 28: Games; videogames machines; toys.
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.
- 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 relevant goods are directed at the public at large and at business customers with specific professional knowledge or expertise. Given that the general public is more prone to confusion, the examination will proceed on this basis.
The degree of attention is considered average.
- The signs
Earlier trade mark
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).
Aurally, it must be noted that in most of the official languages of the relevant territory, such as in English, Finnish, Italian, Spanish, Portuguese, Polish or German, the letters ‘CC’ of the earlier mark and ‘K’ of the contested sign will be identically pronounced as /k/ and the sound of their last letter, namely ‘T’ of the earlier sign and ‘D’ of the contested sign, are similar, albeit not identical. For these consumers, the signs coincide, to a certain extent, in the sounds /rok*t/ of the earlier mark and /rok*d/ of the contested sign. The signs differ therefore mainly in the sound of their penultimate letters, namely the vowel ‘A’ in the earlier mark and ‘I’ in the contested sign.
Therefore, the signs are aurally similar to an above-average degree.
Visually, the signs coincide in their first two letters ‘RO−’. However, they differ in the letters ‘−CCAT’ of ‘−KID’ as well as in the typeface stylisation of the contested sign, albeit not particularly striking. It must be also pointed out that the earlier mark has one letter more than the contested sign, namely six and five respectively.
Therefore, the signs are visually similar to a low 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.
- 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 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 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
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
The goods assumed to be identical must be assessed from the perspective of the public at large with an average degree of attention. The signs are similar, visually to a low degree and aurally to an above-average degree. The conceptual aspect is neutral as neither of the signs has a meaning for the relevant public. The earlier mark has a normal degree of distinctiveness.
It is considered that the coincidences between the signs do not lead to a finding of likelihood of confusion because they are insufficient to counteract the differences between them. In particular, visually the signs only coincide in two out of six letters as regards the earlier mark and two out of five as regards the contested sign. Aurally they differ in the sound of clearly audible vowels, namely ‘A’ in the earlier mark and ‘I’ in the contested sign. These differences are sufficient to avoid on the part of the public any confusion between the signs.
Considering all the above, even assuming that the goods are all identical and that the degree of attention on the part of the public is only average, there is no likelihood of confusion. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
The opponent has also based its opposition on European Union trade mark registration No 11 352 101 for the word mark ‘Roccat’ and goods in Class 9 as well as on European Union trade mark registration No 11 410 371 for the figurative mark and goods in Class 28.
The first sign is identical to the one which has been compared and the second is less similar because the stylisation of its typeface has no equivalent in the contested trade mark. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.