OPPOSITION No B 2 550 690

Covestro Deutschland AG, Kaiser-Wilhelm-Allee 60, 51373 Leverkusen, Germany (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional presentative)

a g a i n s t

Smart Technologies ULC, 3636 Research Road N. W., Calgary, Alberta T2L 1Y1, Canada (applicant), represented by Locke Lord LLP, 201 Bishopsgate, London EC2M 3AB, United Kingdom (professional representative).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 550 690 is partially upheld, namely for the following contested goods:

Class 9:         Interactive computer systems, computers, laptop computers, tablet computers, notebook computers, and light-emitting diodes [LED].

2.        European Union trade mark application No 13 749 551 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

        

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 749 551. The opposition is based on, inter alia, European Union trade mark registration No 9 855 305. The opponent invoked Article 8(1)(a) and (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 9 855 305.

1. The goods

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

Class 9:         Apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling electricity.

Class 17:         Plastics and synthetic resins as semi-finished products; plastic films.

The contested goods are the following:

Class 9:        LCD panels, interactive computer systems, monitors, display monitors, computer monitors, screens, monitor screens, interactive graphics screens, computers, laptop computers, tablet computers, notebook computers, computer peripheral devices, and light-emitting diodes [LED].

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 light-emitting diodes (LED) are semiconductor devices that emit visible light when an electric current passes through them. They fall under the earlier broader terms apparatus and instruments for conducting and transforming electricity and are therefore identical.

The earlier apparatus and instruments for accumulating electricity include batteries of all sorts and chargers. The contested interactive computer systems, computers, laptop computers, tablet computers, notebook computers incorporate batteries as an essential component in order to function and chargers are used together with these goods to ensure that they continue to work. Consequently, the Opposition Division finds that there is similarity between the earlier goods and contested goods due to the complementarity between them and the fact that they may be distributed via the same channels and aimed at the same consumers.

The contested LCD panels, monitors, display monitors, computer monitors, screens, monitor screens, interactive graphics screens are all types of panels or screens which are used in conjunction with computers or other devices. The contested computer peripheral devices are auxiliary devices that connect and work with the computer in some way, such as a computer mouse, keyboards, printers or microphones. The earlier goods are specific apparatus and instruments which deal with electric current and voltage. As seen above, the earlier goods include batteries and chargers. The contested goods, on the other hand, are neither used in conjunction with batteries or chargers, nor do they have anything to do with conducting, switching, transforming, accumulating, regulating and controlling electricity. The goods at issue will be produced by different companies, distributed via different channels. They serve different purposes and are not in competition with one another nor are they complementary. For these reasons, the contested goods are dissimilar to the earlier goods in Class 9. The contested goods are also dissimilar to the earlier Plastics and synthetic resins as semi-finished products; plastic films in Class 17 since they have a different nature, will be manufactured by different companies, aimed at different consumers, distributed via different channels, and they are neither complementary or in competition with one another.

 

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, some of the goods found to be similar are directed at the public at large while others found identical and similar are specialised and directed at business customers with specific professional knowledge or expertise.

The degree of attention in all cases will be rather high, either owing to the specialised nature of the goods or to the fact that goods such as computers are not purchased frequently and are quite expensive.

3. The signs

VIVITOUCH
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.

The common element ‘TOUCH’ is 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 English-speaking part of the public.

The contested sign is a figurative mark consisting of the fairly stylised word ‘VIVID’ in black letters with green dots over the letter ‘I’s and the less stylised word ‘touch’ in green.

The element ‘TOUCH’ contained in the earlier mark and the contested sign will be associated with ‘bringing one’s hand or another part of one’s body into contact with something’. Bearing in mind that the relevant goods include types of computer, this element may be seen as weak for those goods since it alludes to the fact that the goods may function via touch, for example by touching a screen.

The element ‘VIVID’ in the contested sign will be understood as referring to something which is brightly coloured or when describing a memory for example, very clear and detailed. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The letters ‘VIVI’ at the beginning of the earlier mark have no meaning and are distinctive.

Visually, the signs coincide in almost all their letters except for the middle letter ‘D’ in the contested sign. However, this difference has a lesser impact due to the fact that the letter is placed in the middle of the sign and is highly stylised, making it a little difficult to read. Even though ‘TOUCH’ has been found weak, it will not be completely overlooked and there are nevertheless striking similarities between the beginnings of the signs. As well as an extra letter, the contested sign differs from the earlier mark due to its stylisation.

In view of the above explanations regarding the coincidences between the signs, they are considered visually highly similar.

Aurally, the pronunciation of the signs of the signs is almost identical. The only differing letter is ‘D’ in the middle of the contested sign. However, owing to its position and stylisation, it will have less impact on the pronunciation of the sign. Even though ‘TOUCH’ has been found weak, it will not be overlooked since the signs, which consist of one word, will be pronounced as a whole.

Therefore, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘TOUCH’, included in both signs, will be associated with the meaning explained above and will be viewed as weak in connection with the goods. To that extent, the signs are conceptually similar to a low degree.

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.

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 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 weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The signs have been found visually and aurally highly similar. There is also a conceptual link between them, albeit mitigated by the weak distinctive character of that coinciding word, ‘touch’. The goods have been found identical, similar and dissimilar. Although the contested sign contains a different letter in the middle, it will largely go unnoticed due to its position and stylisation.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the 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 found to be identical or similar to those 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.

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark registration No 10 013 795 for the figurative mark  

Since this mark covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as it is based on grounds under Article 8(1)(a) EUTMR because the goods are obviously not identical.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS

Lucinda CARNEY

Vanessa PAGE

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.