Discoball | Decision 2713827 - Ace Dynamics Industrial Limited v. SHENZHEN 1 DREAMLAND E-COMMERCE CO., LTD.
Date Published: Oct 1, 2017
OPPOSITION No B 2 713 827
Ace Dynamics Industrial Limited, Flat B 5/F, Unionway Commercial Centre, 283 Queen's Road Central, Hong Kong 999077, Special Administrative Region of Hong Kong of the Popular Republic of China (opponent), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative)
a g a i n s t
Shenzhen 1 Dreamland E-Commerce Co. Ltd., Floor 6, Block D, Ganghua High-Tech Park, No. 12 Hongmian Road, Nanwan Street Longgang District Shenzhen, Popular Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais 27 10146 Torino, Italy (professional representative).
On 20/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 713 827 is partially upheld, namely for the following contested goods:
Class 9: Cameras [photography]; slide projectors; transparency projection apparatus; projection screens; epidiascopes; projection apparatus; cinematographic apparatus; camcorders; teaching projection lamps; television cameras; video recorders; photographic viewfinders; cases especially made for photographic apparatus and instruments; photography appliance packages; enlarging apparatus [photography]; electric door bells; electronic pens [visual display units]; distance recording apparatus; pedometers; audio- and video-receivers; speed measuring apparatus [photography]; couplers [data processing equipment]; electric alarm bells; electric monitoring apparatus.
2. European Union trade mark application No 15 012 107 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 15 012 107. The opposition is based on the United Kingdom trade mark registration No 3 072 685. 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 goods
The goods on which the opposition is based are the following:
Class 9: Portable telephones; players (dvd---); portable media players; chargers for electric batteries.
The contested goods are the following:
Class 9: Cameras [photography]; slide projectors; transparency projection apparatus; projection screens; epidiascopes; projection apparatus; cinematographic apparatus; camcorders; teaching projection lamps; television cameras; video recorders; photographic viewfinders; heliographic apparatus; cases especially made for photographic apparatus and instruments; photography appliance packages; enlarging apparatus [photography]; electric door bells; electronic pens [visual display units]; counters; meters; distance recording apparatus; pedometers; audio- and video-receivers; speed measuring apparatus [photography]; couplers [data processing equipment]; electric alarm bells; electric monitoring apparatus.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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.
The contested camcorders are portable, self-contained devices, with video capture and recording as their primary function and overlap with the opponent’s portable media players. Therefore, they are identical.
The contested cameras [photography], photographic viewfinders; cinematographic apparatus; distance recording apparatus; pedometers; speed measuring apparatus [photography]; television cameras; video recorders; audio- and video-receivers overlap with portable telephones covered by the earlier mark. Nowadays, especially smart phones have built-in video camera functions that have replaced separate cinematographic cameras not only in everyday use, but sometimes also even in professional use. The goods are to some extent interchangeable, they have partially the same purpose and it is not unusual for manufacturers of the applicant’s goods to also produce the opponent’s goods. They can be bought together in the same shop or the same area of a department store. Therefore, they are to be considered similar.
The contested cases especially made for photographic apparatus and instruments; photography appliance packages; enlarging apparatus [photography] are complementary goods with respect of portable telephones covered by the earlier trade mark. Even if they have a different nature, it is likely to expect that these goods will be purchased at the same time, it being possible that a company would label these complementary products with the same sign so that the relevant public will believe that that originate from the same economic undertaking. Consequently, they must also be deemed similar, as they can coincide in end user and distribution channels.
The contested electric alarm bells; electric monitoring apparatus; electric door bells; electronic pens [visual display units]; couplers [data processing equipment]; can be sold through the same distribution channels, to the same users and be produced by the same manufacturer as the opponent’s chargers for electric batteries. Consequently, these goods are similar.
The contested slide projectors; transparency projection apparatus; projection screen; epidiascopes; projection apparatus; teaching projection lamps are devices used for showing images or videos. These goods are considered to be similar to the earlier DVD players in as much as they can be complementary, can coincide in end user and distribution channels.
The contested heliographic apparatus; counters; meters have no relevant points in common with the opponent’s goods, since they are not used as, or necessarily used in combination with the telephones, chargers or players. Due to their different nature and purpose, they are also not interchangeable or imperative for the use of the other and, therefore, not in competition or complementary. Furthermore, they do not usually share the same retail outlets and they are usually not made by the same manufacturers. Even if found in large department stores, the goods in comparison would not be placed next to each other. Therefore, these goods 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 different degrees are directed both at the public at large, whose level of attention will be average, and at professionals in the electronic and photographic field. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is the United Kingdom.
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 earlier mark is a figurative mark composed of the verbal element ‘Discoball’ written in black. It is smaller in size and below an inverted letter ‘D’ juxtaposed to the letter ‘B’, both written in dark black bold upper-case letters. Due to the size of the initials ‘DB’ and its eye catching visual position, the initials ‘DB’ is considered to be the dominant element.
The contested sign is a figurative mark composed of the verbal element ‘Discoball’ written in white italic, set against a black rectangle background. The contested sign has no elements that could be considered clearly more dominant than other elements.
In the case of the earlier mark, the element ‘DB’ will be perceived by the part of the public as the initial letters of the words ‘DISCO’ and ‘BALL’ that form the word element of the earlier mark, and the unique verbal element of the contested mark. The word ‘Discoball’ is defined as: ‘a round object covered with small mirrors that hangs from the ceiling and reflects light, for example in a disco’ (information extracted from the CAMBRIDGE DICTIONARY on 03/04/2017 at http://dictionary.cambridge.org/dictionary/english/disco-ball ). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
Visually, the signs coincide in the word ‘Discoball’, which is the sole verbal element of the contested sign, and differ in the element ‘DB’ of the earlier mark and figurative elements of both marks.
It must be recalled that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are similar to an average degree from a visual point of view.
Aurally, the signs coincide in the pronunciation of the element /DIS-CO-BALL/, present identically in both signs. As regards the additional letters ‘DB’ of the earlier mark, the Opposition Division considers that the relevant public would not pronounce them at all because, as stated said above, they are the initial letters of the words ‘DISCO’ and ‘BALL’ respectively.
Therefore, the signs are identical from an aural point of view.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with an identical meaning, the signs are conceptually identical.
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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- 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.
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
The goods at issue have been found to be partly identical, partly similar to various degrees and partly dissimilar and the level of attention of the public is considered to vary from average to high.
The conflicting signs are visually similar to an average degree and identical from an aural and conceptual point of view.
Furthermore, account should be taken of the fact that the average consumer only rarely has 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).
Taking into account all the circumstances, the differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that the relevant public will not be able to distinguish the marks in dispute and will perceive them as having the same origin.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 072 685.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees 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.
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
Francesca DINU | Cristina CRESPO MOLTO | Janja FELC |
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.