ANMER | Decision 2718362 - Anker Technology Co., Limited v. Fen Yu
Date Published: Sep 28, 2017
OPPOSITION No B 2 718 362
Anker Technology Co., Limited, Room 703 Kowloon Building, 555 Nathan Road, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (opponent), represented by Ladas & Parry LLP, Temple Chambers, 3-7 Temple Avenue, London EC4Y 0DA, United Kingdom (professional representative)
a g a i n s t
Fen Yu, RM 613 Dong Xing Shang Wu Zhong Xin Liu Xian Er Rd, Section 71 Baoan Dist., Shenzhen 518000, People’s Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais, 27, 10146 Torino, Italy (professional representative).
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 718 362 is partially upheld, namely for the following contested goods:
Class 9: Cell phone cases; Cell phone covers; Audio speakers; Loud speakers; Speaker enclosures; Protective covers for smartphones; Computer cables; Computer carrying cases; Computer mouse; Earphones; headphones; External computer hard drives; Keyboards; Multifunction keyboards; Portable media players; Bags for cameras and photographic equipment; Mobile phone straps; Wireless transmitters and receivers; Computer hardware; computer peripheral devices; mobile phones; Battery charge devices; Electronic game software for wireless devices; Wireless chargers; Wireless computer peripherals; Wireless headsets for smartphones; Virtual reality game software; Plug adaptors.
2. European Union trade mark application No 15 197 395 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 some of the goods of European Union trade mark application No 15 197 395, namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 10 358 406. 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 10 358 406.
- The goods
The goods on which the opposition is based are the following:
Class 9: Apparatus, equipment and instruments for recording and/or reproducing data, sound, images, text and pictures; apparatus, equipment and instruments for the storage of data, sound, images, text and pictures; power supply apparatus and equipment for consumer electronic products; laptop adaptors; cell phone batteries; electronic charging apparatus and equipment; batteries for computers; batteries for laptops; batteries for mobile phones; batteries for cameras; batteries for digital cameras; batteries for camcorders; batteries for digital camcorders; batteries for household appliances; batteries for power tools; accessories for computers, laptop computers, tablet computers, mobile telephones, cameras, digital cameras, camcorders; computers and accessories therefor; desktop computers; personal computers; laptop computers; tablet computers; computer peripherals; monitors; keyboards; mice; mouse mats; cameras for use with computers; speakers; wireless speakers; microphones; cases adapted for computers, laptop computers, tablet computers, mobile telephones, cameras, digital cameras, camcorders; cases adapted for computers; chargers for personal computers; chargers for tablet computers; stands incorporating chargers; stands incorporating chargers for tablet computers; docking stations for personal computers; docking stations for tablet computers; docking stations for laptop computers; docking stations for tablet computers; data storage devices; memory sticks; CD-ROMS; telephonic apparatus and equipment; telephones; mobile telephone apparatus and equipment; hands free kits for phones; stands for mobile phones; chargers for mobile phones; stands incorporating chargers for mobile phones; accessories for telephones and mobile telephones; parts and fittings for all of the aforesaid goods.
The contested goods are the following:
Class 9: Cell phone cases; Cell phone covers; Audio speakers; Loud speakers; Speaker enclosures; Protective covers for smartphones; Computer cables; Computer carrying cases; Computer mouse; Earphones; headphones; External computer hard drives; Keyboards; Multifunction keyboards; Portable media players; Bags for cameras and photographic equipment; Mobile phone straps; Wireless transmitters and receivers; Computer hardware; computer peripheral devices; mobile phones; Battery charge devices; Electronic game software for wireless devices; Wireless chargers; Wireless computer peripherals; Wireless headsets for smartphones; Virtual reality game software; Eyeglasses; Plug adaptors.
The contested cell phone cases; cell phone covers; protective covers for smartphones; mobile phone straps all fall under the broad category of the opponent’s accessories for telephones and mobile telephones, to which they are therefore identical.
The contested audio speakers; loud speakers are included in the broader category of speakers covered by the earlier mark; therefore, they are identical. Moreover, as the contested speaker enclosures are an essential part of the speakers covered by the earlier mark, these goods are similar. Indeed, in all probability, they are produced by the same companies and distributed through the same distribution channels. Furthermore, they are obviously complementary.
The contested computer carrying cases are synonymous and therefore identical to the opponent’s cases adapted for computers.
Keyboards are identically contained in both lists of goods. On the other hand, the contested multifunction keyboards are included in the broader category of the opponent’s keyboards; therefore, they are identical.
The contested computer mouse is identical to mice covered by the earlier mark because they are included in this broad category covered by the earlier mark.
The contested computer peripheral devices; wireless computer peripherals all fall under the broad category of the opponent’s computer peripherals. Therefore, these goods are identical.
The contested external computer hard drives; computer hardware are included in and therefore identical to the opponent’s broad category of computers and accessories therefor.
The contested portable media players are indisputably a kind of apparatus, equipment and instruments for reproducing data, sound, images, text and pictures, for which the earlier mark is registered. They are therefore identical.
The contested bags for cameras and photographic equipment are identical to the opponent’s cases adapted for cameras, digital cameras, camcorders, since they overlap.
The contested mobile phones are identically included in both lists of goods despite the slight difference in their wordings.
The contested battery charge devices, wireless chargers are included in the broader category of the opponent’s electronic charging apparatus and equipment so they are identical.
The contested wireless transmitters and receivers correspond to a kind of computer peripherals and accessories for computers, which are protected by the earlier mark. Therefore, they are identical thereto. Likewise, the contested computer cables fall under the category of the opponent’s accessories for computers, to which they are therefore identical.
The contested wireless headsets for smartphones are synonymous with and therefore identical to the opponent’s hands free kits for phones. Moreover, the contested earphones; headphones overlap with the broad category of the opponent’s accessories for computers, mobile phones; therefore, they are identical.
As regards the contested plug adaptors, the earlier mark is protected for docking stations, which are hardware devices that provide a simplified way of plugging in an electronic device, such as a tablet or a video game console, to common peripherals. Therefore, these two sets of goods have the same nature, the same purpose and the same target public. Furthermore, they also coincide in usual producers and distribution channels. It follows that they are highly similar.
The contested electronic game software for wireless devices; virtual reality game software are similar to the opponent’s computers, as they can coincide in producer, end user and distribution channels. Furthermore, they are complementary.
The contested eyeglasses have nothing in common with the goods covered by the earlier mark. Indeed, they differ in nature, purpose, end users, usual producers and distribution channels. Furthermore, they are neither in competition nor complementary to the goods covered by the earlier mark. Therefore, they are dissimilar.
- 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 found to be identical or similar to various degrees are directed both at the public at large and at business consumers in the field of information technology and/or computing.
The degree of attention of the average consumer of the goods in question may vary from average to high, depending on the technical level of the goods, the frequency of purchase and their price (05/05/2015, T-423/12, Skype, EU:T:2015:260, § 22; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27; and 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37).
- The signs
ANKER | |
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.
At the outset, the Opposition Division notes that the earlier mark’s single element, ‘ANKER’, has a meaning in several languages in the relevant territory, for example in those countries where English, Dutch or German is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on a part of the relevant territory where it is not meaningful, such as Spain.
The earlier word mark’s single element, ‘ANKER’, has no meaning in Spanish and therefore is distinctive for the Spanish-speaking part of the public.
The contested sign is a figurative mark consisting of the verbal element ‘ANMER’, written in a standard black typeface displayed on a white rectangular background. The word element ‘ANMER’ has no meaning for the relevant public, and it is distinctive. It is also more distinctive than the typeface in which it is depicted and the rectangular frame on which it is displayed.
The marks have no elements which are clearly more dominant than other elements.
Visually, the signs coincide in the letters ‘AN*ER’. However, they differ in the letter ‘K’ of the earlier mark versus ‘M’ of the contested sign. They further differ in the graphical depiction of the contested sign, which has no equivalent in the earlier mark.
Taking into account, on the one hand, that the signs have the same length and merely differ in a single letter, which is, in both cases, placed in the middle of the sign, the signs are visually highly similar.
Indeed, neither the typeface in which the contested sign’s word element is depicted nor the white rectangle on which it is depicted is likely to counterbalance such similarity.
Aurally, the contested sign will be pronounced /an/mɛɾ/ and the earlier mark will be pronounced /an/kɛɾ/. The pronunciation of the signs thus coincides in the sound of the letters ‘AN’ and ‘ER’. However, it differs in the sounds of the letters ‘K’ of the earlier mark versus ‘M’ of the contested sign.
Taking account of their position in the middle of the signs, the differing letters will not be emphasised and will have a limited aural significance.
Therefore, the signs are aurally 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.
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 any of the goods in question from the perspective of the Spanish-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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).
In the present case, the earlier mark has an average degree of distinctiveness for the Spanish-speaking part of the public.
Moreover, the signs were found to be visually and aurally similar to a high degree, as, on the one hand, they differ merely in a single letter placed in the middle of the signs and, on the other hand, the graphical depiction of the contested sign will not be given trade mark significance. Moreover, a conceptual comparison is not possible.
Therefore, for the contested goods that are identical or similar to the goods covered by the earlier mark, it is likely that average consumers, relying on their imperfect recollection of the earlier mark, will confuse the contested sign with it.
Indeed, 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 Spanish-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, namely eyeglasses, are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
The opponent has also based its opposition on earlier European Union trade mark registration No 13 254 164 of the figurative mark , protected for batteries and battery chargers; battery cables; battery cases; battery charge devices; battery packs; renewable battery system to provide backup power; camera handles; camera hoods; cell phone battery chargers; computer keyboards; mobile telephone batteries in Class 9.
Since this mark is a figurative sign that includes other elements and covers 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.
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
Carmen SÁNCHEZ PALOMARES | Marine DARTEYRE | Zuzanna STOJKOWICZ |
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.