OPPOSITION No B 2 443 342

Dart Industries Inc., 14901 S. Orange Blossom Trail, Orlando, Florida 32837, United States of America (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH,  Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

Personal 24 Limited, 3rd Floor, 24 Chiswell Street, London  EC1Y 4YX, United Kingdom (applicant), represented by Invention S.R.L., Via delle Armi, 1, 40137 Bologna, Italy (professional representative).

On 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 443 342 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 115 878 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 115 878 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 11 188 083 of the word mark ‘TUPPER’. 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.

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 11 188 083.

The goods and services

Before listing the goods and services it must be remarked that an interpretation is required to determine the scope of protection of these goods and services. The terms ‘in particular(ly)’ and ‘including’ indicate that the specific goods and services that follow are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). However, the term ‘namely’ shows the relationship of individual goods and services with a broader category and restricts the scope of protection only to the specifically listed goods and services.

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

Class 9: Computer software; data processing apparatus and computers; electronic publications (downloadable); apparatus for recording, transmission and reproduction of sound and images; uploadable and downloadable ringtones, voice, music, data, graphics, programs, games and video films for mobile wireless communication devices; magnetic data carriers of all kinds, including music cassettes (MC), video tapes, DAT tapes; mouse pads (mouse mats); mobile phones or other mobile handsets, to be used in connection with or primarily based on mobile telecommunication nets, including respective parts and accessories (as far as included in Class 9); music (downloadable); music MP3s (downloadable); optical data carriers; records; sunglasses; game programs for computers; software, in particular software for downloading music; telecommunication devices (not included in other classes), in particular for fixed networks or mobile networks, except work stations, server, computers, laptops and other computer hardware, with the exception of mobile hardware, in particular PDAs; sound, image and data carriers of all kinds (as far as included in Class 9), including compact disc (CD), digital versatile disc (DVD), high density digital versatile disc (HD-DVD), Blu-Ray disc (BD), CD-ROM, discs and other digital recording media; sound and video recordings; series of musical sound recordings; audio-visual recordings featuring music and musical-based entertainment; downloadable musical sound recordings and audio-visual recordings featuring music and musical-based entertainment; downloadable ringtones and graphics for mobile phones; downloadable wallpapers, widgets, icons and photographs; downloadable banners; storage cases for CDs and DVDs. 

Class 41: Education, particularly cooking courses, training in the field of product presentation; providing of training; sporting and cultural events; recording of videotapes; providing information on events (entertainment); providing information about the designing, organization, production and broadcasting of television and radio programs and databases as well as performances in the Internet and other audiovisual media, not included in other classes; providing electronic publications, not downloadable; operation of sound studios; services of a sound and television studio; arrangement of live performances; performing games on the Internet; education and training; film, sound and video productions; publication of printed matter, excluding for advertising purposes; music shows; games services provided online (from a computer network); online publication of periodicals and books in electronic form; organization and arrangement of sporting and cultural activities; production of radio and television programs, music and entertainment events, films, video and sound recordings as well as video text also for distribution via data, information and communication networks; production of shows; publication of printed matter (also in electronic form), expect for advertising purposes; entertainment, including arrangement and performances of show, quiz and music events, concerts, discotheques; arrangement of music, show, cabaret and theatrical events as well as film and video performances; arrangement of entertainment shows (artists management agency); arrangement of competitions (education and entertainment); composing of texts, except publicity texts; rental of movie films (film distribution); rental of sound recordings; video film production; rental of video films (cassettes); compilation of radio and television programs; entertainment services, in particular, live musical performances; providing a website featuring entertainment information on a recording artist and her tours, performances, non-downloadable audio and audiovisual recordings featuring music and musical-based entertainment, news, appearances, photographs, biographies and other entertainment information; providing online journals, namely, blogs featuring information on recording artists; fan clubs.

The contested goods and services are the following:

Class 9: Radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision), apparatus and instruments; apparatus for use with television receivers, electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; recorded programmes for television and for radio; television receivers including a decoder; set top boxes; all for use in decoding and reception of satellite, terrestrial and cable broadcasts; computers; computer programs; tapes, discs, and wires, all being magnetic; cassettes and cartridges, all adapted for use with the aforesaid tapes; encoded cards; blank and pre-recorded audio and video cassettes, tapes and cartridges; compact discs; phonographic records; radio signal antennae; laser readable discs for recording sound or video; apparatus for decoding encoded signals; video projectors, video screens; sunglasses; electronic computer games; electronic interactive computer games; parts and fittings for all the aforesaid goods; all included in Class 9.   

Class 38: Telecommunication services, namely, personal communications services; telecommunication services, namely, local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable and satellite transmission, mobile radio communication services; mobile and fixed telephone communication services; satellite communication services; cellular telephone services; radio telephone communication services; radio facsimile transmission services; radio paging services; radio communication services, namely the electronic transmission of voice, data, facsimile, video and information; electronic transmission of messages and data; cable radio transmission; rental of telecommunication equipment, namely telephones, radios, radio telephones, and radio facsimile machines and equipment and providing such equipment on a temporary basis under agreements with customers in the case of breakdown, loss or theft of the equipment; providing collocation services for voice, video and data communications applications; providing telecommunications connections to a global computer network; telephone voice messaging services; providing information relating to telecommunications; and telecommunication services, namely assigning a particular telephone number to a particular customer.

Class 41: Television and radio entertainment and educational services; television, radio and film production; video tape, cine films and video film hire; provision of information relating to television and radio programmes, entertainment, music, sport and recreation; organisation of competitions; box office 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.

Moreover, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 9

The contested radio, television, sound recording, sound reproducing, and signalling apparatus and instruments; video projectors, video screens are included in the broad category of, or overlap with, the opponent’s apparatus for recording, transmission and reproduction of sound and images. Therefore, they are identical.

The contested telecommunications apparatus and instruments includes, as a broader category, the opponent’s telecommunication devices (not included in other classes), in particular for fixed networks or mobile networks, except work stations, server, computers, laptops and other computer hardware, with the exception of mobile hardware, in particular PDAs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus for use with television receivers, electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; television receivers including a decoder; set top boxes; all for use in decoding and reception of satellite, terrestrial and cable broadcasts;  radio signal antennae; apparatus for decoding encoded signals are included in the broad category of, or overlap with, the opponent’s telecommunication devices (not included in other classes), in particular for fixed networks or mobile networks, except work stations, server, computers, laptops and other computer hardware, with the exception of mobile hardware, in particular PDAs. Therefore, they are identical.

The contested recorded programmes for television and for radio are included in the broad category of the opponent’s sound and video recordings. Therefore, they are identical.

The contested tapes, discs, and wires, all being magnetic; cassettes and cartridges, all adapted for use with the aforesaid tapes; encoded cards; blank and pre-recorded audio and video cassettes, tapes and cartridges; compact discs; laser readable discs for recording sound or video are included in the broad category of the opponent’s sound, image and data carriers of all kinds (as far as included in Class 9), including compact disc (CD), digital versatile disc (DVD), high density digital versatile disc (HD-DVD), Blu-Ray disc (BD), CD-ROM, discs and other digital recording media. Therefore, they are identical.

The contested computers; computer programs; sunglasses are identically contained in both lists of goods (including synonyms).

The contested phonographic records are included in the broad category of the opponent’s records. Therefore, they are identical.

The contested electronic computer games are identical to the opponent’s game programs for computers although worded differently.

The contested interactive computer games are included in, or overlap with the broad category of the opponent’s game programs for computers. Therefore, they are identical.

The specification parts and fittings for all the aforesaid goods; all included in Class 9 does not make sense in respect of all the ‘aforesaid goods’, e.g. phonographic records, but to the extent that it does, the contested parts and fittings must be considered similar to the goods covered by the earlier mark which were found identical with the ‘aforesaid’ final products compared above, since the parts and fittings thereof are often produced by the same undertakings which manufacture the final products and are sold in the same shops. They also target the same purchasing public, who may expect the original manufacturer to produce or warrant such components of its original goods.

The contested checking (supervision), apparatus and instruments is a broad category of goods including all kinds of devices that provide a supervisory control of goods or functions. For example, a PID controller is a control loop feedback mechanism widely used in industrial control systems and a variety of other applications requiring continuously modulated control by means of the implementation of an algorithm.  These controllers therefore rely on the opponent’s software to increase their functionalities. As a consequence, these goods may be complementary, target the same consumers and are produced by the same undertakings that provide these goods via the same distribution channels. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s checking (supervision), apparatus and instruments, this whole category is considered similar to the opponent’s goods.

Contested services in Class 38

As is clear from their wording the contested telecommunication services, namely, personal communications services; telecommunication services, namely, local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable and satellite transmission, mobile radio communication services; mobile and fixed telephone communication services; satellite communication services; cellular telephone services; radio telephone communication services; radio facsimile transmission services; radio paging services; radio communication services, namely the electronic transmission of voice, data, facsimile, video and information; electronic transmission of messages and data; cable radio transmission; rental of telecommunication equipment, namely telephones, radios, radio telephones, and radio facsimile machines and equipment and providing such equipment on a temporary basis under agreements with customers in the case of breakdown, loss or theft of the equipment; providing colocation services for voice, video and data communications applications; providing telecommunications connections to a global computer network; telephone voice messaging services are all services that allow people to communicate with one another by remote means (e.g. via radio waves, optical signals, etc., or along a transmission line) involving the use of the opponent’s telecommunication devices (not included in other classes), computer software, computers, mobile phones and other apparatus for recording, transmission or reproduction of sound or images. Therefore, these goods and services are complementary and often provided by the same undertakings. Furthermore, these goods and services can be purchased through the same distribution channels, for instance in shops specialising in IT goods and services where also certain telecommunication services can be contracted (12/11/2008, T-242/07, ‘Q2web’, EU:T:2008:488, § 25-27). Therefore, they are similar.

Although the contested providing information relating to telecommunications; and telecommunication services, namely assigning a particular telephone number to a particular customer may not allow people to directly communicate with one another, the consumers of the opponent’s computers or mobile phones may require these services so that they can, or know how to correctly use these telecommunication devices and in that sense these goods and services are complementary. As a consequence they share the same purpose, target the same public and are commonly provided by the same undertakings through the same distribution channels. Therefore, they are similar.

Contested services in Class 41

Educational services; entertainment; sport; organisation of competitions are identically contained in both lists of services (including synonyms).

The contested television and radio entertainment; television, radio and film production; recreation; provision of information relating to television and radio programmes, music; box office services are included in the broad category of, or overlap with, the opponent’s entertainment. Therefore, they are identical.

The contested video tape, cine films and video film hire are identical to, or overlap with the opponent’s rental of movie films (film distribution); rental of video films (cassettes). Therefore, they are considered identical.

1. 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 and services found to be identical or similar are directed at the public at large including business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to above average, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

2. The signs

TUPPER
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.

In the present case the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public since in Spanish the marks are phonetically far more similar than in other languages of the European Union.

Visually, the signs share four letters in the same position, namely their first two and last two letters: ‘TU*(*)ER’. They differ in their middle, that is the letters ‘PP’ in the earlier mark and the letter ‘V’ in the contested sign, as well as in typeface and use of an accent in the contested sign. However, considering that the use of accents is common in Spanish and that the curvy extension of the letter ‘V’ is the only fanciful aspect of the contested sign’s typeface, these differences will not distract the consumer’s attention away from the words they seem merely to embellish, but the design of the mark will be perceived as particular graphic means of bringing the word ‘TUVER’ to the consumer’s attention. Therefore, considering that the consumers will pay more attention to marks’ verbal elements than their particular get-up the difference in their middle letter(s) is not sufficiently outstanding to counterbalance the visual similarities caused by the signs’ more striking shared identical beginnings and endings. Consequently, overall the marks must be considered visually similar to an average degree.

Aurally, it is important to note that in Spanish there are no double P’s and that the letter ‘V’ is pronounced as a soft letter ‘B’, since this results in the double ‘P’ in the earlier mark being pronounced as a single ‘P’ which sounds highly similar to the B-sound of the letter ‘V’ of the contested sign. Moreover, both signs are pronounced in two syllables with the stress on the first syllable. Thus, the pronunciation merely differs in the ‘P’ and ‘B’ sounds in the signs’ middle parts, the letter ‘P’ of the earlier mark being produced without passing air over the vocal cords and the letter ‘V’ of the contested sign being uttered with air. Therefore, overall, the marks are phonetically highly similar.

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.

3. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

4. 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 (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the signs are visually similar to an average degree and aurally similar to a high degree while the conceptual aspect does not influence the assessment of the similarity of the signs. The goods and services were found partly identical and partly similar and must be assessed from the point of view of the public whose degree of attention varies from average to higher than average. Furthermore, the earlier mark enjoys a normal degree of distinctiveness.

In light of all the foregoing considerations, also taking into account the principle of imperfect recollection, it must be held that, even if the relevant consumers display a higher degree of attention when purchasing the goods or services, the differences in the middle  of the signs are not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public could reasonably believe that the contested goods and services come from the same undertaking or from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 188 083. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 11 188 083 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

COSTS

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Justyna GBYL

Adriana VAN ROODEN

Pedro JURADO

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.