3D Brigade | Decision 2741745
Date Published: Sep 28, 2017
OPPOSITION No B 2 741 745
Brigade Electronics Group plc, The Mills, Station Road, South Darenth, Kent DA4 9BD, United Kingdom (opponent), represented by Bromhead Johnson, Sovereign House, 212-224 Shaftesbury Avenue, London WC2H 8HQ, United Kingdom (professional representative)
a g a i n s t
János Vámosi, Leiningen u. 17, 1193 Budapest, Hungary (applicant).
On 11/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 741 745 is upheld for all the contested services.
2. European Union trade mark application No 15 340 193 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 340 193. The opposition is based on European Union trade mark registration No 13 476 932 and on European Union trade mark registration No 11 871 332. 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 11 871 332.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Sounding apparatus and instruments; auditory, visual and audio-visual warning devices; sirens, alarms; alarm systems; alarm apparatus, alarm instruments, alarm installations; systems, apparatus, instruments and installations for generating and/or controlling and/or managing and/or signalling alarms; apparatus and instruments for use in acoustics and/or acoustic applications; loudspeakers, amplifiers, acoustic transducers; apparatus and instruments for generating and/or amplifying and/or emitting sound; apparatus and instruments for recording and/or transmitting and/or reproducing sound and/or images; pagers; paging apparatus and instruments; computer hardware; computer software; vehicle sirens; parts and fittings for any or all of the aforesaid goods.
Class 12: Alarms, alarm systems, alarm apparatus, alarm instruments, alarm installations, all for vehicles; sounding apparatus and instruments for vehicles; vehicle warning devices.
Class 42: Research and/or scientific services; design services; research and/or development and/or design and/or testing of sounding apparatus and/or instruments; research and/or development and/or design and/or testing of auditory and/or visual and/or audio-visual warning devices; research and/or development and/or design and/or testing of apparatus and/or instruments for use in acoustics and/or acoustic applications; consultation and/or information and/or advice relating to any or all of the aforesaid.
The contested services are the following:
Class 42: Computer graphics services.
Contested services in Class 42
The contested computer graphics services are services that concern the use of a computer to produce and manipulate pictorial images on a video screen, as in animation techniques or the production of audiovisual aids. The design services of the earlier mark are a broad category of services that cover any process, practice, or art of devising, planning, or constructing something (as a work of art, structure, device, etc.) according to aesthetic or functional criteria. Therefore, the design services of the earlier mark include, among others, the contested computer graphics services. The conflicting services are considered identical.
- 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 services found to be identical are specialised services directed at professionals and business customers with specific professional knowledge or expertise.
The degree of attention is considered to be higher than average due to the technically sophisticated nature of the services.
- The signs
BRIGADE | 3D Brigade |
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 ‘BRIGADE’ 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 marks are word marks. The earlier mark consists of the word ‘BRIGADE’ and will be understood by the relevant public as, inter alia, a noun meaning ‘a formation of fighting units, together with support arms and services, smaller than a division and usually commanded by a brigadier’ (information extracted from Collins English Dictionary on 03/05/2017 at https://www.collinsdictionary.com/dictionary/english/brigade). As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.
The contested sign is composed of two verbal elements, namely the acronym ‘3D’ and the word ‘Brigade’. The acronym ‘3D’ will be understood by the relevant public as the adjective ‘three-dimensional’, meaning ‘producing or designed to produce an effect of three dimensions’ (information extracted from Collins English Dictionary on 03/05/2017 at https://www.collinsdictionary.com/dictionary/english/3-d). Considering the relevant services (computer graphics services), the term ‘3D’, will be perceived as a reference to a characteristic of the services in question, meaning that these computer design-related services are aiming at the production of effects of three dimensions. Therefore, this element is considered to be of limited distinctiveness. As regards the word ‘Brigade’, this verbal element will be considered distinctive, as in the earlier mark. Therefore, the contested mark will be considered as being composed of one weak, that is ‘3D’, and one distinctive verbal element, that is ‘Brigade’.
In the case of word marks, the word as such is protected and not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.
Visually and aurally, ‘BRIGADE’ constitutes the entire earlier sign and is included in the contested sign as its second verbal element. As explained above, the verbal element ‘BRIGADE’ will be considered the most distinctive element of the contested sign for the services concerned, whereas the acronym ‘3D’, that appears in its beginning, will be considered weak. Thus, the acronym ‘3D’, in the context of the overall impressions conveyed by the marks, will receive less attention than the element ‘Brigade’.
Therefore, the signs are similar to an above average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In particular, the coinciding verbal element ‘Brigade’ will evoke a specific concept, unrelated to the services in question and therefore, will be perceived by the relevant public as a distinctive element of the marks.
Considering the weak acronym ‘3D’ appearing in the contested mark and its weighting in the conceptual similarity of the signs, the signs are conceptually similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 the 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.
- Global assessment, other arguments and conclusion
According to established case law, the likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
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).
The services under comparison are identical.
The signs are similar on account of the verbal element ‘BRIGADE’, which they have in common. They differ in the additional acronym in the beginning of the contested sign.
The coinciding element ‘Brigade’ is distinctive for the services. Therefore, the weak additional element ‘3D’ in the contested sign is not sufficient to clearly distinguish the marks.
Indeed, it is highly conceivable, as the opponent notes, that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Despite the higher degree of attention that the relevant professional public may display when purchasing the services at issue, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers.
Considering all the above, there is a likelihood of confusion on the part of the English-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 11 871 332. It follows that the contested trade mark must be rejected for all the contested services.
As the earlier right ‘BRIGADE’ leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right 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
Denitza STOYANOVA-VALCHANOVA | Alexandra APOSTOLAKIS | Martin EBERL |
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.