kuai | Decision 2683392
Date Published: Sep 28, 2017
OPPOSITION No B 2 683 392
Kuaiwear Limited, A10 Wong’s Building, 33 Hung to Road Kowloon, Kowloon, Hong Kong, Special Administrative Region of Hong Kong of the People’s Republic of China (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Reach Best Technologies Co. Ltd, Nº 2022, 2nd Floor, Building 1, Cuiwei Road, Haidian District, Beijing, People’s Republic of China (applicant), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative).
On 04/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 683 392 is upheld for all the contested goods, namely:
Class 9: Computer game software; computer; programs (downloadable software); downloadable image files; downloadable music files; animated cartoons; cameras (photography); spectacles (optics); batteries, electric; electronic agendas; network communication equipment.
2. European Union trade mark application No 14 955 942 is rejected for all the contested goods. It may proceed for the remaining, uncontested, services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 955 942, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 14 060 875. The opponent invoked Article 8(1)(b) EUTMR in the notice of opposition and, furthermore, in its accompanying letter it also claims Article 8(1)(a) 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: Audio- and video-receivers; data processing apparatus; distance measuring apparatus; distance recording apparatus; apparatus for recording distance; hands free kits for phones; headphones; monitoring apparatus, electric; navigational instruments; pedometers; portable media players; radios; readers [data processing equipment]; satellite navigational apparatus; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; personal stereos; testing apparatus not for medical purposes; time recording apparatus; transmitters [telecommunication]; downloadable music files; intercommunication apparatus; measuring apparatus; measuring instruments; measuring devices, electric; transmitting sets [telecommunication]; video recorders; sounding apparatus and machines; transmitters of electronic signals; computer operating programs, recorded; computer software, recorded; computer programmes [programs], recorded; computer programs [downloadable software]; computer software applications, downloadable; computer memory devices; computer programmes [programs], recorded; computer operating programs, recorded; computer peripheral devices; computer software, recorded; computer programs [downloadable software]; computer game software; computer software applications, downloadable; computers; downloadable music files; downloadable image files; hands free kits for phones; portable telephones; smartphones; telephone receivers; telephone apparatus; telephone transmitters; video telephones; electric apparatus for commutation; goggles for sports.
The contested goods, after a limitation made by the applicant on 27/10/2016, are the following:
Class 9: Computer game software; computer; programs (downloadable software); downloadable image files; downloadable music files; animated cartoons; cameras (photography); spectacles (optics); batteries, electric; electronic agendas; network communication equipment.
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.
In its observations, the applicant argued that the actual use of the conflicting signs demonstrates that there is no likelihood of confusion, since the signs are associated with different goods. In this regard, it referred to the opponent’s and applicant’s websites. However, the Opposition Division notes that the comparison of goods and services must be based on the wording used in the lists of goods and/or services in question, that is, for which the trade mark is registered or for which registration is sought. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s argument must be set aside.
Computer game software; computer; programs (downloadable software); downloadable image files; downloadable music files are identically contained in both lists of goods (despite the singular form of the contested computer and the plural form of the opponent’s computers).
The contested cameras (photography) are devices that are used for taking photographs or capturing moving pictures or video signals. The contested electronic agendas are schedule books kept on a computer in the form of software designed to organise appointments, meetings and other time-sensitive tasks. Both of these contested goods refer to a specific kind of data processing equipment that incorporates specific software to enable the performance of the abovementioned functions. It follows from the above that the contested goods are included in, or overlap with (in the case of some types of cameras), the broad category of the opponent’s data processing apparatus and are, therefore, identical.
The contested spectacles (optics) include, as a broader category, the opponent’s goggles for sports. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested network communication equipment overlaps with the opponent’s intercommunication apparatus. Therefore, they are identical.
The contested batteries, electric are used to power electrical devices such as the opponent’s smartphones. These goods target the same relevant public and are usually sold in the same outlets. Furthermore, consumers would certainly believe that they are manufactured by the same undertaking or economically linked undertakings, since it is common for manufacturers of smartphones to also manufacture their parts and accessories, which are necessary for their operation. Finally, these goods are complementary to each other. Therefore, they are similar.
The contested animated cartoons is pre-recorded content that can be stored on data carriers. They may have the same relevant public and distribution channels as the opponent’s computer software, recorded. Furthermore, these goods are complementary to each other. Therefore, they are similar to a low degree.
- 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 target the public at large and professionals with specific professional knowledge or expertise in the fields of telecommunications and IT. The degree of attention varies from average to high, as some of the goods concerned (e.g. the contested cameras (photography) and spectacles (optics) and the opponent’s smartphones) are likely, due to their degree of sophistication and their cost, to be the subject of a more careful purchasing decision.
- The signs
kuai | |
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 earlier mark is a figurative mark composed of the sequence of stylised letters ‘KUAi’, with the final letter ‘i’ depicted in a way that resembles a figure of a running athlete. Part of the public might not see the letters ‘A’ and ‘i’ in the mark, whereas another part of the public will perceive them clearly. Therefore, considering the best-case scenario for the opponent, the Opposition Division finds it appropriate to limit its examination to the part of the public that will read the earlier mark as ‘KUAi’. In this regard, it is to be recalled that, if a significant part of the relevant public for the goods at issue may be confused about the origin of the goods, this is sufficient to establish a likelihood of confusion. It is not necessary that it be established that all actual or potential consumers of the relevant goods are likely to be confused.
The contested sign is a word sign, ‘kuai’.
The verbal element ‘KUAi’/‘kuai’ that the signs have in common has no meaning for the relevant public and is, therefore, distinctive to an average degree for the goods in question. The fact that it is a transcription of a Chinese word that can be translated into English as ‘quick’ is irrelevant in the present case, since Chinese is not an official language of the European Union.
The applicant claims in its submissions that the overall impressions of the signs are different due to the stylisation of the earlier mark. However, the Opposition Division does not agree with this assertion and reminds the parties that, when signs consist of both verbal and figurative components (as does the earlier mark), 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). Therefore, contrary to the applicant’s argument, the graphic stylisation of the earlier mark has only a limited impact on the consumer’s perception.
Neither of the signs has any element that could be considered more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘KUAi’/‘kuai’ and they differ in the stylisation of the earlier mark, which, however, has a limited impact on the consumer’s perception, as noted above.
Therefore, the signs are visually similar to at least an average degree.
Aurally, the signs are identical, given that they coincide in all of their sounds, namely ‘KUAi’/‘kuai’.
Conceptually, although the public in the relevant territory will perceive the concept of a running athlete in the earlier mark, as explained above, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
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 relevant goods 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
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
As concluded above, the goods are identical or similar to different degrees and they target the public at large and professionals with a degree of attention that varies from average to high. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.
The signs in dispute are visually similar to at least an average degree, aurally identical and conceptually not similar, as explained in detail above in section c) of this decision. The differences between the signs are not sufficient to counteract their similarities, since the differences (lying in the graphic stylisation of the earlier mark) have a limited impact on consumers’ perception of the signs, as outlined above.
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 covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable, image.
In the present case, although the public in the relevant territory might detect certain visual differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a word variation of the earlier mark, configured in a different way depending on the type of goods that it designates. It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking under the ‘kuai’ brand.
In its submissions, the applicant argues that it is the owner of many ‘KUAI’ trade mark registrations in several countries all over the world, namely in the European Union, Korea, Hong Kong, Columbia, the Philippines, Saudi Arabia and Japan. In support of this argument, the applicant submitted registration certificates for these trade mark registrations, along with their translations into English. As regards this argument, the Opposition Division notes that the deliberations on likelihood of confusion are restricted to the comparison of the conflicting signs and the goods/services as registered and applied for. Brand portfolios or specific marketing strategies of the parties are immaterial for the examination of likelihood of confusion. Therefore, the applicant’s argument must be set aside.
The applicant also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
The previous cases referred to by the applicant are not relevant to the present proceedings. This is because in the case of 24/11/2015, B 2 398 405 (REGINA DI SABA vs. Regina et al), the conflicting signs coincided from the visual and aural perspectives in the word ‘REGINA’, which, from the conceptual point of view, would be perceived by the relevant public as an ordinary female name. In this regard, the Opposition Division stated that the likelihood of the consumer establishing a link is lower if the earlier mark consists of a term which, because of a meaning inherent in it, is very common and frequently used (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 38). However, in the present case, from the perception of the relevant public, the signs’ coinciding verbal element ‘KUAi’/‘kuai’ has no concept whatsoever. In addition, the case referred to by the applicant dealt with the reputation of the earlier marks and not with the likelihood of confusion.
In the second decision referred to by the applicant (03/10/2001, R 433/2000-1, ARTHUR (FIG. MARK) / ARTHUR (FIG. MARK), the Board came to the conclusion that even if the word ‘Arthur’ is present in both marks (note: both marks were figurative), visually, the figure dominates over the verbal component written in the foreground, and, therefore, the trade marks are notably dissimilar. However, the present comparison is focused on the earlier figurative mark, on one hand, and the contested word sign, on the other hand, where the figurative nature of the earlier mark does not play a particularly strong role, as stated above in the section c) of this decision.
Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including likelihood of association) on the part of the relevant public, and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 060 875. As regards the focus on a part of the relevant public, as outlined above, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.
It follows from the above that the contested sign must be rejected for all the contested goods, even for the contested goods that are similar to only a low degree to the opponent’s goods, since, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those goods is clearly offset by the average degree of visual similarity and the aural identity between the signs.
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(1)(a) 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
Richard BIANCHI | Martin MITURA | Ric WASLEY |
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.