OPPOSITION DIVISION
OPPOSITION No B 2 685 157
Angela Pernsteiner, Egertastrasse 4, 9490 Vaduz, Liechtenstein (opponent),
represented by Bettinger Scheffelt Kobiako von Gamm Partnerschaft Mbb
Rechtsanwälte Patentanwälte, Bavariaring 14, 80336 Munich, Germany
(professional representative)
a g a i n s t
Shenzhen UBC Technology Co., Limited Room D08,Yiben EBusiness Industrial
Park No.1063 Chaguang Road, Xili Town, Nanshan District, Shenzhen 518055,
People’s Republic of China (applicant), represented by Global IP Law Ltd., Wisteria
House, Clarendon Road, South Woodford, London, E18 2AW, United Kingdom
(professional representative).
On 03/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 685 157 is partially upheld, namely for the following
contested goods:
Class 9: Transmitters of electronic signals; cameras [photography]; detectors;
measuring devices, electric; remote control apparatus; electronic
agendas; measures; naval signalling apparatus.
Class 28: Toys; playing cards.
2. European Union trade mark application No 14 906 101 is rejected for all the
above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
Preliminary remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the goods of European Union trade
mark application No 14 906 101 for the figurative sign , namely against
some of the goods in Classes 9 and 28. The opposition is based on international
Decision on Opposition No B 2 685 157 page: 2 of 7
trade mark registration No 1 236 712 designating the European Union for the
figurative mark . 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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Apparatus for recording, transmission or reproduction of sound or images;
data processing equipment, computers, in particular virtual reality
computer hardware for visualizing products or objects; computer software;
virtual reality software, in particular for visualizing products or objects;
virtual reality game software; computer hardware.
Class 12: Water vehicles; yachts; boats; ships.
Class 20: Furniture.
Class 38: Computer aided transmission of images.
Class 41: Entertainment; arranging and conducting of exhibitions for entertainment
purposes.
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; design and development of virtual
reality software; development of computer programs and computer game
software; design and development of computer game software; design,
development and programming of virtual reality software and virtual reality
computer hardware for visualizing products or objects.
The contested goods are, after the partial rejection of the EUTMA in the course of
opposition proceedings No B 2 685 835, the following:
Class 9: Transmitters of electronic signals; cameras [photography]; detectors;
measuring devices, electric; transformers [electricity]; remote control
apparatus; electronic agendas; measures; naval signalling apparatus.
Class 28: Toys; playing cards; body-building apparatus; machines for physical
exercises; rods for fishing.
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.
Decision on Opposition No B 2 685 157 page: 3 of 7
The term ‘in particular’, used in the opponent’s list of goods, indicates that the
specific goods 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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 cameras [photography] are included in the broad category of the
opponent’s apparatus for recording and transmission or reproduction of images in
Class 9. They are identical.
The contested transmitters of electronic signals are included in or overlap with the
opponent’s apparatus for transmission of sound or images in Class 9. They are
identical.
The contested electronic agendas are included in the broad category of the
opponent’s data processing equipment in Class 9. They are identical.
The contested naval signalling apparatus are included in the broad category of the
opponent’s apparatus for transmission of sound in Class 9. They are identical.
The contested detectors; remote control apparatus are similar to the opponent’s
apparatus for recording, transmission or reproduction of sound or images in Class 9
(which are all electronic apparatus), as they can have the same producer, relevant
consumers and distribution channels. Furthermore, they are complementary.
The contested measuring devices, electric; measures are similar to a low degree the
opponent’s scientific and technological services in Class 42 as they can coincide in
producer, end user and distribution channels.
The contested transformers [electricity] are devices that transfer an alternating
current from one circuit to one or more other circuits, usually with an increase (step-
up transformer) or decrease (step-down transformer) of voltage. These goods have a
different nature and purpose from the opponent’s goods and services in Classes 9,
12, 20, 38, 41 and 42. The opponent’s goods in Class 9 are apparatus for recording,
transmission or reproduction of sound or images; data processing equipment,
computers; computer software; virtual reality software; virtual reality game software;
computer hardware; in Class 12 all kinds of water vehicles; in Class 20 furniture; in
Class 38 computer aided transmission of images; in Class 41 all sorts of
entertainment and in Class 42 mainly services provided by persons, individually or
collectively, in relation to the theoretical and practical aspects of complex fields of
activities, such as services provided by members of professions such as chemists,
physicists, engineers, computer programmers, etc., are included. Thus, they are
neither complementary to nor in competition with each other. Their distribution
Decision on Opposition No B 2 685 157 page: 4 of 7
channels and methods of use are also different. Consumers would not think that
these goods coincide in producer. Therefore, they are dissimilar.
Contested goods in Class 28
The contested toys; playing cards are similar to a low degree to the opponent’s
entertainment services in Class 41. Although by their nature goods are generally
different from services, these goods and services have the same purpose, of
amusement, and they have the same consumers. They can have the same origins
and distribution channels, since it is not unlikely that producers will manufacture and
sell a wide range of amusement products and provide entertainment services.
As regards the remaining contested goods in Class 28, namely body-building
apparatus; machines for physical exercises; rods for fishing, contrary to the
opponent’s allegations, the Opposition Division considers that they do not share any
relevant points of contact with the earlier goods and services in Classes 9, 12, 20,
38, 41 and 42, of which a detailed description has been given above. They clearly
differ in nature, purpose and method of use. Furthermore, they do not coincide in
producers or distribution channels and they are not complementary or in competition.
Therefore, they are dissimilar.
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.
In the present case, the goods and services found to be partly identical and partly
similar to different degrees are directed at the public at large, including business
customers with specific professional knowledge or expertise.
The public’s degree of attentiveness varies from average to high, depending on the
price, specialised nature, or terms and conditions of the purchased goods and
services, as some of the goods and services are normally purchased or provided on
an infrequent basis for a very specific purpose and their price could also be relatively
high.
c) The signs
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
Decision on Opposition No B 2 685 157 page: 5 of 7
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. Consequently, the Opposition Division finds it appropriate to focus the
comparison of the signs on the non-English-speaking part of the public, because for
this part of the public both marks are meaningless and have a normal distinctiveness
in relation to all the goods and services at stake.
The earlier mark is a figurative mark composed of the term ‘usence’ written in a fairly
standard black lower case bold typeface.
The contested sign is a figurative sign made up of the sequence of letters ‘USENSE’,
written in a fairly standard black bold upper case italic typeface. The first letter ‘U’ is
depicted in shaded a green colour, whereas the remaining letters are in black.
Visually, the signs coincide in the sequence of letters ‘USEN*E’, which forms almost
the entirety of the signs, whereas they differ in the penultimate letter, namely ‘c’ vs
‘S’. Moreover, the fact that the letters that the signs have in common, ‘USEN*’, form
the beginning of the signs under comparison is especially important, since the
consumer reads from left to right or from top to bottom and will perceive these letters
first.
Regarding the typeface in which the verbal elements of the signs are depicted, this
stylisation is fairly standard and will not divert the consumer’s attention away from the
elements it seems to embellish.
Therefore, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in the relevant territories, the
pronunciation of the signs coincides in the sound of the letters ‘USEN*E’. For a
significant part of the relevant public, the penultimate letter ‘c’ in the earlier mark will
be pronounced identically to the letter ‘S’ in the contested sign. If this is the case, the
marks are aurally identical. For the remaining part of the relevant public, that will
pronounce the letter ‘c’ differently to the letter ‘S’, the marks under comparison are
similar to a high degree.
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. Since a conceptual comparison is not possible, the conceptual aspect does
not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 685 157 page: 6 of 7
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.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
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.
e) Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The contested goods are partly identical, partly similar to different degrees and partly
dissimilar to the earlier mark’s goods and services. The level of attention varies from
average to high, meaning that consumers will be more informed and observant for
some of the goods and services at stake. The earlier mark has a normal degree of
distinctiveness.
The signs are visually and aurally similar to a high degree (or even aurally identical
for part of the relevant public). The conceptual comparison remains neutral.
In addition, account should also be taken of the fact that average consumers only
rarely have the chance to make a direct comparison between the different marks but
must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd
Schuhfabrik, EU:C:1999:323, § 26). Having said that, it is stressed that 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).
In view of all the relevant factors in the present case and the principle of
interdependence between them, i.e. the principle that a lesser degree of similarity
between the goods and services may be offset by a greater degree of similarity
between the marks, in the case at hand, the high (or even identity for a part of the
relevant public – at least insofar as the aural comparison is concerned) similarity of
the marks offsets the low degree of similarity between some of the goods and
services.
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 international
trade mark registration No 1 236 712 designating the European Union. 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.
Decision on Opposition No B 2 685 157 page: 7 of 7
It follows from the above that the contested trade mark must be rejected for those
goods which are identical or similar to different degrees to the goods and services of
the earlier trade mark.
The rest of the contested goods 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 cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Chantal VAN RIEL Klaudia MISZTAL Saida CRABBE
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
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.