OPPOSITION No B 2 681 792

Unifaun AB, Box 2326, 403 15 Göteborg, Sweden (opponent), represented by Advokatfirman Nordia, Kungsportsavenyen 1, 411 36 Göteborg, Sweden (professional representative)

a g a i n s t

Ding Changsheng, Room 509, Unit 5, Building 1, Jiaan Road No.96, Baoan District, Shenzhen,Guangdong, People's Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 681 792 is partially upheld, namely for the following contested goods and services:

Class 9:        Computer peripheral devices; Navigational instruments; Diaphragms [acoustics]; Cameras [photography]; Measuring instruments; Theft prevention installations, electric; Battery chargers; Audiovisual teaching apparatus; Video screens; Switches, electric; Electricity mains (Materials for -) [wires, cables]; Protection devices for personal use against accidents; Mobile phones.

Class 35:        On-line advertising on a computer network; Presentation of goods on communication media, for retail purposes; Advertising; Publicity; Import-export agencies; Sales promotion for others; Procurement services for others [purchasing goods and services for other businesses]; Personnel management consultancy; Office machines and equipment rental; Providing business information via a website; Providing online commercial directory information services.

2.        European Union trade mark application No 14 997 373 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 997 373, namely against all the goods and services in Classes 9 and 35. The opposition is based on European Union trade mark registration No 11 173 663. 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 and services on which the opposition is based are the following:

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus.

Class 35:        Advertising; Business management; Business administration; Office functions.

Class 39:        Transport; Packaging and storage of goods; Travel arrangement.

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.

The contested goods and services are the following:

Class 9:        Computer peripheral devices; Navigational instruments; Diaphragms [acoustics]; Cameras [photography]; Measuring instruments; Theft prevention installations, electric; Battery chargers; Audiovisual teaching apparatus; Video screens; Switches, electric; Electricity mains (Materials for -) [wires, cables]; Protection devices for personal use against accidents; Mobile phones.

Class 35:        On-line advertising on a computer network; Presentation of goods on communication media, for retail purposes; Advertising; Publicity; Import-export agencies; Sales promotion for others; Procurement services for others [purchasing goods and services for other businesses]; Personnel management consultancy; Office machines and equipment rental; Providing business information via a website; Providing online commercial directory information services; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

As a preliminary remark, 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.

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 computer peripheral devices overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images Therefore, they are identical.

Navigational instruments, measuring instruments are identically contained in both lists of goods (including synonyms).

The contested cameras [photography]; video screens are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of images. Consequently, they are identical.

The contested battery chargers; switches, electric; electricity mains (materials for -) [wires, cables] are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested audiovisual teaching apparatus are included in the broad category of the opponent’s teaching apparatus. Therefore, they are identical.

The contested mobile phones are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

A diaphragm is ‘a thin disc that vibrates when receiving or producing sound waves, used to convert sound signals to electrical signals or vice versa in telephones, etc’ (information extracted from Collins Dictionary on 28/06/2017 at https://www.collinsdictionary.com/dictionary/english/diaphragm). The contested diaphragms (acoustics) are used as components of the opponent’s apparatus for recording, transmission or reproduction of sound. They are related to the audio field and can be considered complementary to each other in the sense that they are used to reproduce and record sound. Furthermore, they also have the same end users, distribution channels, sales outlets and commercial origin. They are similar.

The contested theft prevention installations, electric; protection devices for personal use against accidents could include devices that record and reproduce sound or images. Therefore they have the same intended purpose and end users as the opponent’s apparatus for recording, transmission or reproduction of sound or images. They can also coincide in producers and distribution channels. These goods are similar.

Contested services in Class 35

The contested on-line advertising on a computer network; presentation of goods on communication media, for retail purposes; sales promotion for others are included in the broad category of the opponent’s advertising. Therefore, they are identical.

Advertising; publicity are identically contained in both lists of services (including synonyms).

The purpose of the contested personnel management consultancy services consists of organising people and resources efficiently so as to direct activities towards common goals and objectives. These services are included in the broad category of, or overlap with, the opponent’s business administration. Therefore, they are identical.

The opponent’s office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. The contested office machines and equipment rental are included in the broad category of the opponent’s office functions. Therefore, they are identical.

The opponent’s business management services consist of providing businesses with the necessary support, including tools and expertise, to acquire, develop and expand market share. They are usually rendered by companies specialised in this specific field such as business consultants. This broad category includes the contested providing business information via a website. Consequently, they are identical.

The contested import-export agency services are similar to the opponent‘s business management, as they can coincide in provider, end user and distribution channels.

The contested procurement services for others (purchasing goods and services for other businesses) are services that relate to the acquisition of goods, services or works from an external source. Issues in procurement include identifying the needs of customers and suppliers, choosing and preparing tools and processes to communicate with suppliers, preparing requests for proposals and requests for quotations, and setting policies for evaluating proposals, quotes and suppliers. In light of the above, the contested services and the opponent’s business management services are similar, since these services have the same general purpose of contributing to the smooth running of a company, they may be provided by the same consultant companies, and the end users of the services are also the same.

The opponent’s business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by inter alia employment agencies, auditors and outsourcing companies. They can have the same purpose as the contested providing online commercial directory information services. These services may share the same professional origin and the same professional consumers. Therefore, they are similar.

Retail services allow consumers to satisfy different shopping needs at one stop and usually target the general consumer. They can take place in a fixed location, such as the retail stores and wholesale outlets, or in the form of non-shop retailing, that is, over the internet, or by catalogue or mail order. The object of wholesale trade is similar, except that, in this case, the relevant public is the retailer purchasing the goods wholesale (07/07/2005, C-418/02, Praktiker, EU:C:2005:425). The opponent’s services in Class 35 are all sorts of services aimed at supporting or helping other businesses to do or improve their business. For all the above, the contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies do not share any points in common with the earlier services in Class 35 since they will not be provided by the same companies, through the same channels or aimed at the same consumers. They are not in competition with each other or complementary either. They are even further removed from the opponent’s remaining services in Classes 39 and 42 for the same reasoning. Therefore, the services at issue are dissimilar.

As regards the opponent’s goods in Class 9, first, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, namely movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Although in some cases there is a clear connection between goods and services, usually due to a strong, interdependent, complementary relationship, this is not so in the present case. The contested services and the opponent’s goods have different natures, purposes and methods of use. They are clearly not in competition or complementary, and they do not come from the same producers or providers. They target very different publics and are offered or sold through different channels. Therefore, the contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies are dissimilar to all the opponent’s goods.

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

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

Unifaun
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘faun’ and ‘FUN’ are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public such as French and Spanish.

Contrary to the applicant’s argument, the Opposition Division points out that in the case of word marks, it is the word as such that is protected and not its written form. Therefore, in the case of the earlier trade mark, it is irrelevant whether it is presented in upper or lower case letters, or in a combination thereof.

The applicant claims in its observations that the beginning of the signs, ‘UNI’, is a Latin prefix meaning ‘one or unique’, and that, therefore, this is a weak or allusive element for all the goods and services. Although part of the public would recognise that meaning in this element, another part will not understand it and still another will not dissect the beginning, ‘UNI’, from the rest, ‘faun’/‘FUN’. The words ‘Unifaun’ and ‘UNIFUN’, as a whole, are meaningless for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs coincide in the sequence of letters and sounds ‘Unif*un’. The differences between the signs are confined to the additional letter ‘A’, only contained in the earlier trade mark, and the minimal stylisation of the contested sign.

The word ‘UNIFUN’ constitutes the entire contested sign and six letters out of seven of the earlier mark. Therefore, the marks are visually and aurally similar to a high degree.

Conceptually, although the signs as a whole do not have any meaning, for part of the public in the relevant territory, the element ‘UNI’, included in both signs, will be associated with ‘one, unique’. Although this element is weak for the relevant goods and services, the signs are conceptually similar to a low degree for this part of the public to the extent that they have in common the abovementioned beginning.

From the perspective of the part of the public that will not dissect the signs because it does not understand the beginning ‘UNI’ and does not perceive any meaning in the signs as a whole, 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 trade mark enjoys a high degree of recognition among the relevant public in the European Union in connection with part of the goods and services for which it is registered, namely computer software, in Class 9; business management; business administration; office functions, in Class 35; telecommunications, in Class 38; transport; packaging and storage of goods; travel arrangement, in Class 39, and design and development of computer hardware and software, in Class 42.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Annexes 1, 3, 5: Printouts from the webpage www.unifaun.com with press releases giving information about the company.
• Annexes 2, 7: Extracts from website www.unifaun.com with information about the history, the present status and the targets achieved.
• Annex 4: An information leaflet in Swedish.
• Annex 6: Freight labels, dated 2016.
• Annex 8: Leaflet with information about the control of dispatches made by Unifaun.
• Annexes 9-15: Extracts from Facebook webpage showing Unifaun exhibitions stands in 2014, 2015 and 2016.
• Annex 16: Leaflet in Finnish.
• Annex 17: Extract from website www.mikrofiber.se with information in Swedish.
• Annex 18: Unifaun magazine, in Swedish, dated 2014.
• Annex 19: One page of unknown origin that includes information on two registered Unifaun trademarks, one in the EU and the other in Norway.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

With respect to the evidence, it was up to the opponent to submit a translation in the language of the proceedings within the same period that was allowed to substantiate the opposition, as required by Rules 16(1) and 17(3) EUTMIR. In this regard, part of the evidence submitted (annexes 9-18) was not accompanied by a translation into English, which is the language of the proceedings.

Regarding the evaluation of the evidence, it must be borne in mind that the relevant date for proving enhanced distinctiveness is the filing date of the contested trade mark (or any priority date), which in this case is 13/01/2016. The closer the date of the evidence submitted is to the relevant date, the easier it will be to assume that the earlier mark had acquired enhanced distinctiveness at that time. The evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date. Evidence of enhanced distinctiveness with regard to a later point in time than the relevant date might nevertheless allow the drawing of conclusions as to the enhanced distinctiveness of the earlier mark at the relevant date (see, by analogy, 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31; 17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 53; 15/12/2005, T-262/04, Briquet à pierre, EU:T:2005:463, § 82). For this reason, the evidence submitted to prove enhanced distinctiveness must be dated or, at least, there should be a clear indication of when the facts attested to therein took place. The annexes 3, 6, 7, 14 and 15 are dated after the time of filing of the contested sign and do not allow the drawing of conclusions as to the enhanced distinctiveness.

Likewise, the probative value of the printouts of the opponent’s webpage (Annexes 1, 2, 3, 5 and 7) is diminished, as it comes from the party itself and not from an independent third party. In addition, the rest of the evidence submitted is limited and no independent or otherwise objective documents have been provided.

Therefore, in the absence of any further evidence, such as the results of surveys regarding the mark’s recognition, invoices, affidavits, advertisements, statements from chambers of commerce and industry or other trade and professional associations, etc., to prove that the sign enjoys a high degree of distinctiveness in the European Union, the Opposition Division concludes that the opponent has failed to prove that the earlier trade mark has acquired a high degree of distinctiveness through use.

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, despite the presence of a possible weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

In the present case, the goods and services at issue are partly identical or similar and partly dissimilar, and they target the public at large and business customers with a degree of attention that may vary from average to high.

Contrary to the applicant’s observation, the conflicting signs are visually and aurally similar to a high degree and conceptually similar to a low degree for some, whilst for the others they have no concept. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness.

In its observations, the applicant argues that the element ‘UNI’ of the earlier trade mark and the contested sign has a low distinctive character given that there are many trade marks that include ‘UNI’. In support of its argument the applicant refers to several trade mark registrations in the European Union and the European Union member countries.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘UNI’. Under these circumstances, the applicant’s claims must be set aside.

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). Furthermore, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17.

Consequently, the relevant public, when encountering the signs in relation to the services at issue, is likely to confuse the trade marks or make a connection between the conflicting signs and assume that the goods and services come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English speaking part of the public and 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 and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

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

Keeva DOHERTY

Carlos MATEO PÉREZ

Richard BIANCHI

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.