DECA | Decision 2641481
Date Published: Oct 1, 2017
OPPOSITION No B 2 641 481
Dekra e.V., Handwerkstraße 15, 70565 Stuttgart, Germany (opponent), represented by Uexküll & Stolberg Partnerschaft Von Patent- und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative)
a g a i n s t
China Capital Brands Limited, 3rd Floor, 207 Regent Street, London W1B 3HH, United Kingdom (applicant),
On 04/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 641 481 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 558 423 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 558 423. The opposition is based, inter alia, on German trade mark registration No 302 014 008 138. The opponent invoked Article 8(1)(b) and 8(5) 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 German trade mark registration No 302 014 008 138.
- The goods and services
The goods and services on which the opposition is based are, inter alia, 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; lightning conductors; fire detectors; fire protection apparatus; helmets for head protection; crash test dummies; batteries; Magnets, magnetizers and demagnetizers; Apparatus for treatment with electricity; apparatus, instruments and wires for electricity; Optical apparatus and instruments, enhancers and correctors; Safety, security, protection and signalling devices; Diving equipment; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, devices and controllers; Scientific research and laboratory apparatus, educational apparatus and simulators; Parts and fittings for all aforementioned goods included in this class.
Class 35 Advertising; business management; business administration; office functions; Marketing and promotional services; organisation of fairs and exhibitions; Commercial services and consumer information services, namely retail and wholesale services relating to goods in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32,33 und 34; Auctioneering services; Rental of vending machines; intermediation services; Business contacts organization; Collective buying services; commercial evaluation services; Arranging and organizing of competitions; Agency services; Import and export services; Negotiation and middlemen services; Ordering services; Price comparison services; Procurement services, for others; Business assistance; Personnel placement; Employment recruiting services; Personnel recruitment; Personnel management consultancy; Selection of personnel by means of psychological testing; Business consultancy and advisory services; Business inquiries; Damage management for insurance companies, insurance brokers and industrial undertakings, namely consultancy services for the settlement of insurance damages; Administration of insurance contracts for third parties; Arranging of trade fairs; Business analysis, research and information services, especially evaluation of conformity, evaluation of companies, business analyses and analyses; Collating, compiling, systemization and maintenance (also via Internet) of test data and other data in particular certification end company data in data bases; Evaluation of business opportunities with regards to professional business matters, professional business consultancy; Organizational consultancy; Professional business consultancy for private persons and companies in the areas of career planning and occupational aptitude evaluation, career development and career management, and implementation of workforce outside the company (outplacement) and inside the company (inplacement); Consultancy relating to the establishment and operation of businesses; Business consultancy services relating to the supply of quality management systems; Business consultancy services relating to purchase and sale of used cars; Business consultancy services relating to purchase of boats and ships; Consulting and information relating to aforementioned services included in this class.
Class 38 Telecommunications; Providing platforms and portals on the Internet; Services of an on line provider, namely news agencies and transmission of information, except financial or stock market information, in electronic networks; Providing on line platforms, also for the purpose of trading, on the Internet, except value papers or banking services; Telecommunication/Operation of electronic marketplace via Internet, not for value papers or banking services; Providing access to information on the Internet, in particular information on leased vehicles, used employee´s vehicles, company cars and fleet vehicles; Computer aided transmission of messages and images; Information and consultancy relating to the aforesaid services, included in this class.
The contested goods and services are the following:
Class 9 Computer Hardware; Computer Software; Computer peripherals; Electronic data processing installations; computer network apparatus; parts and fittings for all the aforesaid goods.
Class 35 Advertising, business management and business administration, employment agency services relating to temporary and permanent placement of personnel; conducting skills evaluation for individuals; consultancy relating to personnel management; selection, recruiting services and employment agency services for temporary, short-term and permanent personnel; providing qualified technical personnel on a temporary and contract basis.
Class 38 Telecommunication services; transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet.
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.
The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’ used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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
The contested computer hardware; computer network apparatus; parts and fittings for all the aforesaid goods include, as a broader category, or overlap with the opponent’s computers; parts and fittings for all aforementioned goods included in this class. Therefore, they are identical.
Computer Software; parts and fittings for all the aforesaid good are identically contained in both lists of goods.
Electronic data processing installations; parts and fittings for all the aforesaid goods are included in the broad categories of the opponent’s data processing equipment; parts and fittings for all aforementioned goods included in this class. Therefore, they are identical.
The contested Computer peripherals; parts and fittings for all the aforesaid goods are similar to the opponent´s computers as they are similar in nature and can coincide in producer, end user, distribution channels. Furthermore, they are complementary.
Contested services in Class 35
Advertising, business management and business administration; consultancy relating to personnel management are identically contained in both lists (including synonyms).
Employment agency services relating to temporary and permanent placement of personnel; selection, recruiting services and employment agency services for temporary, short-term and permanent personnel; providing qualified technical personnel on a temporary and contract basis are included in the broad category or overlap with the opponent’s Employment recruiting services. Therefore, they are identical.
The contested conducting skills evaluation for individuals overlaps with the opponent´s selection of personnel by means of psychological testing. Therefore, they are identical.
Contested services in Class 38
Telecommunication services are identically included in both lists (including synonyms.
The contested transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet are included in the broad category of the opponent’s telecommunications. Therefore, they are 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 goods found to be identical or similar are directed at the general public as well as at professional consumers with specific professional knowledge or expertise. Their complexity and price may vary, e.g. some computer peripherals may be rather simple and inexpensive, whereas some business management services may be very complex and expensive.
Therefore, the degree of attention may vary from average to higher than average.
- The signs
DEKRA | DECA |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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).
Neither of the signs has a meaning for the relevant public. Therefore, they are distinctive.
Visually, the signs coincide in the letters “DE” and “A”, located in the beginning and in the ending of the signs. They differ in their middle part, namely the letters “KR” in case of the earlier mark versus the letter “C” in case of the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs only differs in the sound of the letter “R” of the earlier mark, which has no counterpart in the contested mark. The letters “K” and “C” however will be pronounced identical in German.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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.
- 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).
The goods and services in question are mostly identical, otherwise similar. The signs are visually similar to an average degree and aurally highly similar and the attention of the relevant public will vary from average to higher than average.
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). 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).
Therefore, also in case of the goods and services where the attention of the relevant public may be higher than average, given the visual and especially the high aural similarities between the signs, likelihood of confusion cannot safely be excluded in respect of the goods and services that have been found to be identical or similar.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 014 008 138. It follows that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to their reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier German trade mark registration No 302 014 008 138 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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
Peter QUAY | Tobias KLEE | Sigrid DICKMANNS |
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.