MXPRO | Decision 2784927
Date Published: Sep 24, 2017
OPPOSITION No B 2 784 927
Cherry GmbH, Cherrystr., 91275 Auerbach, Germany (opponent), represented by Aurigium Leischner & Luthe Patentanwälte Partnerschaft mbB, Robert-Koch-Str. 2, 82152 Planegg, Germany (professional representative)
a g a i n s t
ShenZhen Dongzhoujun Technology Co.,Ltd, 3-4F. BuildingA#, Chajiaokan Industrial Zone,Sanhe Village, Tongsheng Community, Dalang, Longhua Distr, Shenzhen 518000, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).
On 25/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 784 927 is upheld for all the contested goods.
2. European Union trade mark application No 15 492 119 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 492 119 . The opposition is based on German trade mark registration No 30 2014 050 666
. 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: Computer input devices; computer mice; computer keyboards; card readers; switches; snap switches; push button switches; sliding contact switches; rocker switches; selector switches; key modules; controls; cooktop controls; oven controls; wireless remote switches; transmission sensors; power electronics; sensors; positions sensors; vane switches; gear tooth sensors; angular position sensors; position sensors; door sensors.
The contested goods are the following:
Class 9: Notebook computers; laptop computers; aerials; modems; transponders; network communication apparatus; portable media players; sound transmitting apparatus; television apparatus; audio- and video-receivers.
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 in Class 9
The opponent’s computer input devices consist of pieces of computer hardware equipment, used to provide data and control signals to an information processing system such as a computer or information appliance.
The contested modems; portable media players; sound transmitting apparatus; audio- and video-receivers are covered by the opponent’s computer input devices, being therefore identical.
The contested network communication apparatus overlap with the opponent’s computer input devices, since the contested goods can be sold in the form of input devices, used as peripheral hardware, in relation to computers. Therefore, they are identical.
The contested notebook computers; laptop computers are similar to the opponent’s computer input devices. These goods can be complementary, coincide in distribution channels and points of sale, can be directed at the same consumers and are likely to come from the same kinds of undertakings.
The contested television apparatus are similar to the opponent’s computer input devices since they can be used in a complementary way, can coincide in distribution channels and points of sale and can coincide in producer.
The contested aerials; transponders are similar to at least a low degree to the opponent’s computer input devices since they can be used in a complementary way and can be produced by the same kinds of undertakings.
- 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 both, the public at large and at business customers or professionals, with specific professional knowledge or expertise.
The degree of attention paid by consumers during the purchase of these goods will vary from average to high, depending on their characteristics. A high degree of attention is likely to occur when, for instance the goods purchased are of high prices and/or constitute infrequent purchases (e.g. laptop computers; television apparatus).
- The signs
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).
The earlier mark is formed by the letters ‘MX’ in black regular font. It is framed by two black curved lines, positioned above and below the letters. The contested sign consists of the letters ‘MX’ in black regular bold letters, and the element “PRO”, in somewhat smaller slightly stylised black letters.
The element ‘MX’ in the signs are meaningless in the relevant territory, and therefore of average distinctive character. The element “PRO” is, as argued by the opponent, a known abbreviation for “professional”, frequently used in Germany. The lines in the earlier mark are merely decorative banal shapes, non-distinctive, positioned as a frame. The element ‘PRO’ is void of distinctive character, for being a clear reference to the characteristics of the goods in question and/or a reference to the kind of consumers they are addressed to (i.e. for professional use).
According to the above, the only distinctive element in both signs is the combination of letters ‘MX’, being the rest of elements in them void of distinctive character.
The earlier mark has no element more dominant (visually eye-catching) than others. However, 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). Therefore, the visual impact of “MX” is reinforced, compared to that of the curved lines.
The contested sign has no element more dominant (visually eye-catching) than others. However, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, in this case, consumers will first focus their attention on “MX”.
According to the above, even if the signs have no element more dominant (visually eye-catching) than others, in both signs the element ‘MX’ has bigger impact than the differing elements accompanying it.
Visually, the signs coincide in the element ‘MX’, which is the only distinctive element in both marks, and also the one causing a greater impact in both sign, for the reasons detailed above (i.e. being the first element read and pronounced in the contested mark, and the one with stronger impact in consumers in the earlier mark).
In this same line, the differing elements have only a minimal impact for consumers, since they are non-distinctive elements, and of less impact than the coinciding part ‘MX’.
For all of the above, the signs are considered to be visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of letters ‘mx’ (pronounced by spelling them), present identically in both signs.
The pronunciation differs in the sound of ‘pro’, which has no counterpart in the earlier sign. For the part of the public that will pronounce the contested mark as ‘mx pro’, the marks are aurally similar to at least an average degree.
However, since this differing part “pro” is non-distinctive, and therefore not capable to identify the commercial origin of the goods, it is likely that at least part of public will omit this element when pronouncing the mark, and refer to it by pronouncing ‘MX’ only. For this part of the public the signs are aurally identical.
Conceptually, although the public in the relevant territory will perceive the meaning of “PRO” (i.e. professional) in the contested mark, as explained above, the other 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 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
The goods compared in section a) have been considered to be partly identical and partly similar to varying degrees.
The signs are visually highly similar, aurally similar to at least an average degree or identical, depending on how consumers refer to them aurally, and not conceptually similar.
The degree of attention paid by consumers during the purchase of these goods will vary from average to high.
As explained above, the signs coincide in the element ‘MX’, which is the only distinctive element in both marks, and also the one causing a greater impact in both sign, for the reasons detailed above (i.e. being the first element read and pronounced in the contested mark, and the one with stronger impact in consumers in the earlier mark). In addition, the differing elements (i.e. lines of the earlier mark and ‘PRO’ in the contested mark) have only a minimal impact for consumers, since they are non-distinctive elements, and therefore not capable of identifying the commercial origin of the goods.
According to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on this, consumers might believe that the conflicting goods found to be identical or similar come from the same or economically-linked undertakings.
Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity and similarity (even if only to a low degree) of the goods involved, are clearly enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods come from the same or economically-liked undertakings.
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. For instance, by adding ‘PRO’ to a trade mark, in order to designate a new line of products for professional use.
Although the public in the relevant territory might detect certain visual and aural 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 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 (e.g. for professional and not professional use).
Considering all the above, there is a likelihood of confusion on the part of the public.
For the sake of completeness, the Opposition Division notes that this conclusion stands also even if a high degree of attention was paid during the purchase of the goods involved, since a high degree of attention will not be enough to avoid such confusion and/or association under the present circumstances.
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 2014 050 666. It follows that the contested trade mark must be rejected for all the contested 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.
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
Carlos MATEO PÉREZ | María del Carmen SUCH SANCHEZ | Vít MAHELKA |
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.