OPPOSITION No B 2 691 528

Canon Kabushiki Kaisha, 30-2, Shimomaruko 3-chome, Ohta-ku, Tokyo  146-8501, Japan (opponent), represented by Weser & Kollegen, Radeckestrasse 43, 81245 München, Germany (professional representative)

a g a i n s t

Sellhelp AB, Norrbackagatan 47, 11341 Stockholm, Sweden (applicant), represented by IPQ IP Specialists AB, 11 Vasagatan, 11th floor, 111 20 Stockholm, Sweden (professional representative).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 691 528 is partially upheld, namely for the following contested goods:

Class 9:        Downloadable computer application software for mobile devices; Computer application software for mobile telephones and e-readers

2.        European Union trade mark application No 14 586 218 is rejected for all the above goods. It may proceed for the remaining goods and 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 14 586 218. The opposition is based on European Union trade mark registration No 3 671 427. 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.

1. The goods and services

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

Class 9:        Electronic printers, dye sublimation thermal printers, ink jet printers, parts of all the aforementioned goods and fittings therefor (included in class 9).

The contested goods and services are the following:

Class 9:        Downloadable computer application software for mobile devices; software for marketing, advertising, and selling goods and services via the Internet or other communications network; computer application software for enabling users to find, view, evaluate, and purchase goods and services via the Internet or other communications network; Computer application software for mobile telephones and e-readers, computer software for the bringing together, for the benefit of others, of a variety of goods and services, enabling customers to purchase those goods and services.

Class 35:        Online marketing, advertising, and the provision of commercial, advertising, and promotional information to facilitate the sale of goods and services of others via the Internet or other communications network from an Internet website particularly specialising in the marketing of the sale of goods and services of others; Providing classified advertising space via the internet or other communications networks; Auctioneering on global networks, advertising on global networks, securities brokerage; Rental of advertising space; On-line advertising on a computer network; Online publication of advertising material; Sale of clothing, footwear and headgear, accessories namely jewellery, bags, clocks, umbrellas, parasols, articles of fancy dress, sports equipment, exercise clothing, perfumery, skin care products, hair care products, hygiene articles, make-up, paints, cleaning preparations, pharmaceutical and veterinary preparations, stationery, pictures, wall decorations, mirrors, furniture, textiles, sewing articles, electronic apparatus and instruments, horticultural products, kitchenware, picture frames, bed clothes, table covers, decorations for Christmas trees, food, beverages, plants and flowers, toys, baby carriages, car seats for children, cots, bouncing cradles, baby changing tables, changing bags, headphones, mobile telephones, mobile accessories, computers, computer accessories, tablets, smart watches, television games, television apparatus, cameras, loudspeakers, books, films, novelties for parties, musical instruments, vehicle accessories, pet accessories on commission; Retailing of clothing, footwear and headgear, accessories namely jewellery, bags, clocks, umbrellas, parasols, articles of fancy dress, sports equipment, exercise clothing, perfumery, skin care products, hair care products, hygiene articles, make-up, paints, cleaning preparations, pharmaceutical and veterinary preparations, stationery, pictures, wall decorations, mirrors, furniture, textiles, sewing articles, electronic apparatus and instruments, horticultural products, kitchenware, picture frames, bed clothes, table covers, decorations for Christmas trees, food, beverages, plants and flowers, toys, baby carriages, car seats for children, cots, bouncing cradles, baby changing tables, changing bags, headphones, mobile telephones, mobile accessories, computers, computer accessories, tablets, smart watches, television games, television apparatus, cameras, loudspeakers, books, films, novelties for parties, musical instruments, vehicle accessories, pet accessories.

Class 36:        Organising of charitable collections; Financial transfers and transactions, and payment services.

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 ‘particularly’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

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 opponent’s electronic printers are used as peripheral devices in combination with computers as well as with mobile devices including e-readers. In order to use a peripheral device in combination with a mobile device it is essential that the mobile device is equipped with application software customised for such an electronic printer. Therefore, the contested Downloadable computer application software for mobile devices and Computer application software for mobile telephones and e-readers are complementary to the opponent’s electronic printers. It is common that the manufacturer of electronic printers also creates such fitting software applications for their products. Furthermore, the goods have the same consumer. Therefore, they are similar.

The contested software for marketing, advertising, and selling goods and services via the Internet or other communications network; computer application software for enabling users to find, view, evaluate, and purchase goods and services via the Internet or other communications network and computer software for the bringing together, for the benefit of others, of a variety of goods and services, enabling customers to purchase those goods and services and all the opponent’s goods, e.g. electronic printers, do usually not coincide in producer. They also differ in their intended purposes, to promote the sale of goods, to gather information about certain goods and to purchase those (contested goods) versus printing (opponent’s goods). Considering all the above, the goods are dissimilar.

Contested services in Class 35

The contested Online marketing, advertising, and the provision of commercial, advertising, and promotional information to facilitate the sale of goods and services of others via the Internet or other communications network from an Internet website particularly specialising in the marketing of the sale of goods and services of others; Providing classified advertising space via the internet or other communications networks; Auctioneering on global networks, advertising on global networks, securities brokerage; Rental of advertising space; On-line advertising on a computer network; Online publication of advertising material and all the opponent’s goods are dissimilar. The above mentioned contested services are all marketing, advertising and auctioneering services. The fact that some goods may appear in advertisements or are subject to marketing or auctioneering is insufficient for finding similarity. They differ in nature and purpose from the manufacture of goods. Furthermore, they are neither in competition nor complementary.

The contested Sale of clothing, footwear and headgear, accessories namely jewellery, bags, clocks, umbrellas, parasols, articles of fancy dress, sports equipment, exercise clothing, perfumery, skin care products, hair care products, hygiene articles, make-up, paints, cleaning preparations, pharmaceutical and veterinary preparations, stationery, pictures, wall decorations, mirrors, furniture, textiles, sewing articles, horticultural products, kitchenware, picture frames, bed clothes, table covers, decorations for Christmas trees, food, beverages, plants and flowers, toys, baby carriages, car seats for children, cots, bouncing cradles, baby changing tables, changing bags, headphones, mobile telephones, mobile accessories, computers, computer accessories, tablets, smart watches, television games, television apparatus, cameras, loudspeakers, books, films, novelties for parties, musical instruments, vehicle accessories, pet accessories on commission and Retailing of clothing, footwear and headgear, accessories namely jewellery, bags, clocks, umbrellas, parasols, articles of fancy dress, sports equipment, exercise clothing, perfumery, skin care products, hair care products, hygiene articles, make-up, paints, cleaning preparations, pharmaceutical and veterinary preparations, stationery, pictures, wall decorations, mirrors, furniture, textiles, sewing articles, electronic apparatus and instruments, horticultural products, kitchenware, picture frames, bed clothes, table covers, decorations for Christmas trees, food, beverages, plants and flowers, toys, baby carriages, car seats for children, cots, bouncing cradles, baby changing tables, changing bags, headphones, mobile telephones, mobile accessories, computers, computer accessories, tablets, smart watches, television games, television apparatus, cameras, loudspeakers, books, films, novelties for parties, musical instruments, vehicle accessories, pet accessories and the goods of the opponent are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The contested sale services (retail or wholesale) consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services (or wholesale) of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

It is to be noted that the same reasoning applies to the sale of electric apparatus and instruments on commission. As electric apparatus and instruments in Class 9 cannot be interpreted as covering all apparatus powered by electricity. Indeed, there are apparatus powered by electricity in various classes. The term electric apparatus and instruments included in the list of goods in Class 9 covers apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Consequently, the opponent’s electronic printers are not identical to electric apparatus. Therefore, these services are also dissimilar to all the goods of the opponent. 

Contested services in Class 36

The contested Organising of charitable collections; Financial transfers and transactions, and payment services and the opponent’s goods are different in nature, since services are intangible whereas goods are tangible. They serve completely different needs, have different providers/producers and are neither in competition nor complementary. Therefore, they are dissimilar.

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 are directed at the public at large.

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

3. The signs

Selphy	SELLPY
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 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. To avoid to examine the existence and lack of the meaning of the conflicting signs and their different pronunciations throughout the whole European Union, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.

Initially it is to be noted in regards to word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial.

The earlier sign is a word mark consisting of the verbal element ‘Selphy’, which do not bear any meaning from the perspective of the relevant public and is therefore distinctive.

The contested sign is a word mark consisting of the verbal element ‘SELLPY’, which do not have any meaning from the perspective of the relevant public and is therefore distinctive.

Visually, the signs coincide in their first three letters ‘SEL’ and in their last letter ‘Y’. Furthermore, both signs contain the letter ‘P’ in fourth (earlier sign) respectively fifth position (contested sign) and consist of six letters. They differ in that the contested sign has an additional ‘L’ and the earlier sign the letter ‘H’. Therefore, the signs are visually highly similar.

According to the Italian pronunciation rules, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the relevant part of the public. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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’).

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 relevant part 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

A part of contested goods were found similar to the goods of the earlier mark. The remaining contested goods and services were found dissimilar to the goods of the earlier mark.

Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness for the relevant part of the public. It has been also established above that the signs are visually highly similar and aurally identical.

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 visual similarity and the aural identity between the signs lead the consumers to think that the goods, found to be similar, come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Italian-speaking part of the relevant public. Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

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

The rest of the contested goods and services are dissimilar. As 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

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.