OPPOSITION DIVISION

OPPOSITION No B 2 616 426

Intel Corporation, 2200 Mission College Boulevard, Santa Clara, California 95052-

8119, United States of America (opponent), represented by CMS Cameron

McKenna Nabarro Olswang LLP, Cannon Place, 78 Cannon St, London London

EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

Contemporary Amperex Technology Co. Limited, No. 1 Xingang Road, Zhangwan

2. European Union trade mark application No 14 395 362 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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

. The opposition is based on,

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

Decision on Opposition No B 2 616 426 page: 2 of 9

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

for conducting, switching, transforming, accumulating, regulating or

controlling electricity; apparatus for recording, transmission or

reproduction of sound or images; magnetic data carriers, recording

discs; automatic vending machines and mechanisms for coin-

operated apparatus; cash registers, calculating machines, data

processing equipment and computers; fire-extinguishing apparatus;

computers; notebook computers; laptop computers; portable

computers; handheld computers; personal digital assistants; personal

media players; mobile telephones; smart phones; digital cameras;

servers; computer hardware; computer and telecommunications

computer graphics boards; computer peripherals and electronic

apparatus for use with computers; parts, fittings, and testing

apparatus for all the aforesaid goods; downloadable electronic

publications in the area of computers, telecommunications, telephony,

and wireless communications; digital video recorders; set top and set

back boxes; televisions.

The contested goods are the following:

Class 9: Galvanic cells; battery boxes; accumulators, electric; batteries,

electric, for vehicles; batteries for lighting; plates for batteries;

electricity mains (material for -) [wires, cables]; graphite electrode;

The contested galvanic cells; battery boxes; accumulators, electric; batteries,

electric, for vehicles; batteries for lighting; condensers [capacitors] are included in the

broad category of the opponent’s apparatus and instruments for accumulating

electricity. Thus, these goods are identical.

Decision on Opposition No B 2 616 426 page: 3 of 9

The contested plates for batteries are included in the broad category of the

opponent’s apparatus and instruments for accumulating electricity; parts, fittings, and

testing apparatus for all the aforesaid goods. It follows that these goods are identical.

stable electrical source are included in the broad category of the opponent’s

apparatus and instruments for conducting electricity. Thus, these goods are identical.

The contested integrated circuits are also covered by the earlier trade mark.

connectors for other circuit boards to be slotted into. Thus, these goods are identical.

b) 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.

proceed on this basis.

c) The signs

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

Decision on Opposition No B 2 616 426 page: 4 of 9

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.

The common element ‘INSIDE’ is not meaningful in certain territories, for example in

‘POWER’ of the contested mark will be understood in certain territories where English

is not commonly understood, such as the Italian-speaking part of the European

the signs on the Italian-speaking part of the public.

The contested mark is a figurative mark, namely the following,

Preliminarily, the Opposition Division notes that the contested sign also contains the

two letters ‘TM’, which will be understood as an informative indication that the sign is

purportedly registered. This element is not part of the trade mark as such.

Consequently, these two letters will not be taken into consideration for the purposes

fact the vast majority of the consumers, and in particular the Italian-speaking

consumers now taken into account, do not have even a minimum understanding of

Chinese languages or in general Far-East languages, considering that Chinese

characters are logograms used in the writing of Chinese, Japanese, Korean and

some other Asian languages. Therefore, these elements will be simply understood as

Chinese characters, as already explained. Since the mere presence of these

characters will be taken as a simple indication of the possible origin of the goods in

question, namely the Far-East, these elements are deemed to be non-distinctive.

As regards the remaining word elements, the word ‘INSIDE’ has no meaning for the

relevant public and is, therefore, distinctive.

The elements ‘solid power’ will then be associated to a positive meaning in relation to

energy. Bearing in mind that the relevant goods in Class 9 are all related to energy

and power, these elements as a whole expression are weak for these goods.

Decision on Opposition No B 2 616 426 page: 5 of 9

The contested sign has no element that could be considered clearly more dominant

than other elements.

Visually, the signs coincide in the word ‘INSIDE’, which is distinctive in both signs.

The fact that in the case of the contested sign this word is in lower case letters is not

letters, numbers and other signs (e.g. ‘+’, ‘@’, ‘!’) reproduced in the standard

typeface used by the respective office. This means that they do not claim any

‘INTEL’ of the earlier mark and in the additional weak elements ‘solid power’ of the

contested sign.

Aurally, the pronunciation of the signs coincides in the syllables ‘IN-SI-DE’

(according to the Italian pronunciation), present identically in both signs and being

part of the distinctive word ‘INSIDE’. The pronunciation differs in the sound of the two

syllables ‛IN-TEL’ of the earlier sign, which is a distinctive element, and in the sound

of the weak elements ‘solid power’ of the contested sign.

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

Conceptually, although the public in the relevant territory will perceive the meanings

of the elements of the contested sign as explained above, the other sign has no

d) 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’).

meaning for any of the goods in question from the perspective of the public in the

e) Global assessment, other arguments and conclusion

According to the Court of Justice’s case law, the risk that the public might believe that

the goods or services in question come from the same undertaking or, as the case

may be, from economically-linked undertakings, constitutes a likelihood of confusion

Decision on Opposition No B 2 616 426 page: 6 of 9

(29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd

Schuhfabrik, EU:C:1999:323, § 17).

The likelihood of confusion must be appreciated globally, in accordance with the

relevant public’s perception of the signs and of the goods and services in question,

C-251/95, Sabèl, EU:C:1997:528, § 22; 22/06/1999, C-342/97, Lloyd Schuhfabrik,

EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the

degree of similarity between the goods may be offset by a greater degree of similarity

17).

overall impression created by them, bearing in mind, in particular, their distinctive and

dominant components. The wording of Article 8(1)(b) EUTMR, ‘…there exists a

likelihood of confusion on the part of the public…’, shows that the perception of marks

in the mind of the average consumer of the category of goods or services in question

plays a decisive role in the global appreciation of the likelihood of confusion. Average

consumers normally perceive a mark as a whole and do not proceed to analyse its

various details, since they rarely have the chance to make a direct comparison

between different marks, but must trust in their imperfect recollection of them

(11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd

Schuhfabrik, EU:C:1999:323, § 25).

degree since they share a distinctive element, namely the word ‘INSIDE’.

From a conceptual perspective, they are not similar. However, this is due to the

presence of elements in the contested sign that, as explained above in section c) of

the present decision, play a secondary role whether because they are weak (‘solid

power’), or non-distinctive (the Chinese characters).

In view of the foregoing, it is likely to expect that of the whole contested sign the word

‘INSIDE’, which has a normal degree of distinctiveness, will be remembered more

clearly than the rest of the sign.

As regards the earlier mark ‘INTEL INSIDE’, both elements plays the same role from

into account as an example.

Also, the Opposition Division deems that consumers may legitimately believe that the

contested sign is a new brand line or a recent development under the opponent’s

mark. In other words, consumers may confuse the origins of the goods at issue found

to be identical by assuming that they come from the same undertaking or from

economically linked undertakings.

Decision on Opposition No B 2 616 426 page: 7 of 9

In fact, although the coincidences in the signs are less obvious than the differences,

a likelihood of confusion still exists, as the coinciding element plays an independent

distinctive role in both signs. Most of the differences between the signs are confined

to secondary elements and aspects.

In its observations of 07/02/2017 the applicant argues that there are several

registrations with the word ‘INSIDE’ in the European Union trade marks Register,

marks on a particular market might, together with other elements, contribute to

likelihood of confusion that the Office finds between two conflicting marks (judgment

of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility

can be taken into consideration only if, at the very least, during the proceedings

before the EUIPO concerning relative grounds for refusal, the applicant for the

European Union trade mark duly demonstrated that such coexistence was based

upon the absence of any likelihood of confusion on the part of the relevant public

between the earlier marks upon which it relies and the intervener’s earlier mark on

which the opposition is based, and provided that the earlier marks concerned and the

marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169,

§ 86).

Only under special circumstances may the Opposition Division consider evidence of

the coexistence of other marks in the market (and possibly in the register) at

national/Union level as an indication of ‘dilution’ of the distinctive character of the

opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value

should be treated with caution as there may be different reasons as to why similar

signs coexist, e.g. different legal or factual situations in the past, or prior rights

agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this

Also, the applicant refers to previous decisions of the Office to support its arguments.

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).

Decision on Opposition No B 2 616 426 page: 8 of 9

Considering all the above, there is a likelihood of confusion on the general part of the

Italian-speaking part of the public. 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. Also, given that a likelihood of confusion

for only part of the relevant public of the European Union is sufficient to reject the

Therefore, the opposition is well founded on the basis of the opponent’s European

must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the

As the earlier European Union trade mark registration No 8 144 115 leads to the

success of the opposition and to the rejection of the contested trade mark for all the

goods against which the opposition was directed, there is no need to examine the

other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo

Media, S.L., EU:T:2004:268).

Furthermore, since the opposition is fully successful on the basis of the ground of

Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the

opposition, namely Article 8(5) EUTMR.

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.

Decision on Opposition No B 2 616 426 page: 9 of 9

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

deemed to have been filed only when the appeal fee of EUR 720 has been paid.

decision of the Opposition Division on request. According to Article 109(8) EUTMR

filed within one month of the date of notification of this fixation of costs and will be