SENDIS | Decision 2730532
Date Published: Sep 22, 2017
OPPOSITION No B 2 730 532
Datwyler TeCo Holding B.V., De Tweeling 28, 5215 MC Den Bosch, The Netherlands (opponent), represented by Algemeen Octrooi- en Merkenbureau B.V., John F. Kennedylaan 2, 5612 AB Eindhoven, The Netherlands (professional representative)
a g a i n s t
ShenzhenShi Sendisi Keji Youxian Gongsi, FutianQu ShennanzhongLu 2072 Hao, Dianzhidasha 04Ceng 11-13, Shenzhen, Guangdong 518109, People’s Republic of China (applicant), represented by Berry Davies LLP, The Old Barn, Sheppard’s Farm, Draycot Foliat, Swindon, Wiltshire SN4 0HX, United Kingdom (professional representative).
On 13/09/17, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 730 532 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 287 048 ‘SENDIS’, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 13 924 261 and Benelux trade mark registration No 980 595 . 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 and services
The goods and services on which the opposition is based are the following:
European Union trade mark No 13 924 261
Class 9: Apparatus and instruments for conduction, distribution, conversion, storage, arranging and sending electricity; apparatus for recording, transmission or reproduction of sound or images; audio apparatus and radio receivers; monitors, television receivers, and film and video apparatus; compact disc players; DVD players, DVD recorders; karaoke equipment; computer peripherals, hardware for computer networks; personal digital assistants; navigation devices; telephones, mobile phones, smartphones; apparatus for video, audio and photo editing; electric wiring and plugs for audio, video and computers; data cables and routers; power supplies, converters, adapters; video and audio apparatus for DJs, including mixing consoles, turntables for LPs and headphones; headphones, in-ear headphones; loudspeakers; microphones; satellite apparatus, satellite aerials; antennas; electric and electronic apparatus, including electric kitchen scales, cooking thermometers and cooking timers; covers for video, audio, photographs, computers, navigation and computer games; bags for cameras; covers adapted for mobile telephones, personal digital assistants, smartphones, tablets and laptops; computer game joysticks; controllers for use with computers.
Benelux trade mark No 980 595
Class 9: Apparatus and instruments for conduction, distribution, conversion, storage, arranging and sending electricity; apparatus for recording, transmission or reproduction of sound or images; audio apparatus and radio receivers; monitors, television receivers, and film and video apparatus; compact disc players; karaoke equipment; personal digital assistants; navigation devices; telephones, mobile phones, smartphones; apparatus for video, audio and photo editing; electric wiring and plugs for audio, video and computers; data cables and routers; power supplies, converters, adapters; video and audio apparatus for DJs, including mixing consoles, turntables for LPs and headphones; headphones, in-ear headphones; loudspeakers; microphones; satellite apparatus, satellite aerials; antennas; electric and electronic apparatus, namely electric kitchen scales, cooking thermometers and cooking timers; covers for video, audio, photographs, computers, navigation and computer games; bags for cameras; covers adapted for mobile telephones, personal digital assistants, smartphones, tablets and laptops; computer game joysticks; controllers for use with computers; DVD recorders; hardware for computer networks; emergency power supply for computers; UPS (uninterruptable power supply) systems.
Class 35: Sales (retailing and wholesaling) and advertising in relation to machines and apparatus for household use, hand tools, electric and electronic apparatus, including household apparatus, and parts and accessories therefor; Sales (retailing and wholesaling) and advertising in the field of furniture, lighting, audiovisual apparatus, apparatus for information technology, and parts and accessories therefor.
The contested goods are the following:
Class 9: Audio cables; battery cables; battery chargers; battery chargers for use with telephones; carrying cases for cell phones; carrying cases for mobile computers; cases adapted for cameras; cases adapted for computers; cases for mobile phones; cases for telephones; cell phone battery chargers; cell phone battery chargers for use in vehicles; cell phone cases; cell phone covers; chargers for batteries; clear protective covers specially adapted for personal electronic devices, namely, cell phones, smart phones, computers and laptops; computer cables; computer carrying cases; computer cursor control devices, namely, light pens; connection cables; converters; converters for electric plugs; current converters; display screen protectors for providing shade and privacy specially adapted to electronic devices, namely, cell phones, smart phones, computers and laptops; electric power converters; frequency converters; hands free devices for mobile-phones; hands free kits for phones; headsets for cellular or mobile phones; laptop carrying cases; notebook computer carrying cases; power cables; power connectors; power wires; protective covers and cases for cell phones, laptops and portable media players; protective covers and cases for tablet computers; protective covers for smartphones; protective display screen covers adapted for use with cell phones, smart phones, computers and laptops; stereo cables; USB cables; USB cables for cellphones; wireless cellular phone headsets.
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier trade marks.
- 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 assumed to be identical are directed at the public at large.
The degree of attention is considered average.
- The signs
European Union trade mark No 13 924 261
Benelux trade mark No 980 595 | SENDIS |
Earlier trade marks | Contested sign |
The relevant territory is the European Union for European Union trade mark No 13 924 261 and Benelux for Benelux trade mark No 980 595.
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).
Earlier EUTM No 13 924 261 is a figurative mark consisting of the verbal element ‘NEDIS’ in standard black bold letters. It also contains figurative elements, namely a white star above the letter ‘N’ and a blue triangle behind the other elements.
The word ‘NEDIS’ has no meaning for the relevant public and its distinctiveness is average, since, for the relevant goods, it is not descriptive, laudatory or allusive. The figurative elements, a star and a triangle, are clearly visible and will be perceived by the relevant public as such.
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; 19/12/2011, R 233/2011-4, Best Tone, § 24; 13/12/2011, R 53/2011-5, Jumbo, § 59).
Therefore, the verbal element ‘NEDIS’ in earlier EUTM No 13 924 261 has a stronger impact on the consumer than the figurative elements and it is the most distinctive element of the mark. Both figurative elements are basic simple geometrical shapes and the star could refer to high-quality goods. Therefore, the distinctiveness of these figurative elements is low.
However, neither the figurative elements (the star and the triangle) nor the verbal element are visually more eye-catching than the other elements; therefore, earlier EUTM No 13 924 261 has no elements that could be considered clearly more dominant than other elements.
Earlier Benelux trade mark No 980 595 is a figurative mark consisting of the verbal element ‘NEDIS’ in standard blue bold letters and a figurative element: a blue star above the letter ‘N’.
The word ‘NEDIS’ has no meaning for the relevant public and its distinctiveness is average, since for the relevant goods it is not descriptive, laudatory or allusive. The figurative element, namely the star, is clearly visible and it will be perceived by the relevant public as such.
Along similar lines of reasoning to those stated above for earlier EUTM No 13 924 261, the verbal element ‘NEDIS’ in earlier Benelux trade mark No 980 595 is more distinctive than the figurative element (the star), which has a low degree of distinctiveness. Earlier Benelux trade mark No 980 595 has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
The contested sign is a word mark consisting of the six-letter word ‘SENDIS’. It has no meaning for the relevant public and is not descriptive, laudatory or allusive to the goods at issue; therefore, its distinctiveness is considered average.
Visually, the signs coincide in the last three letters, ‘DIS’, of their verbal elements. However, they differ in their beginnings. The verbal elements of the earlier marks start with ‘NE’, and the verbal element of the contested sign starts with ‘SEN’. The letters ‘E’ and ‘N’ appear in reverse order. The first letter ‘S’ of the contested sign has no counterpart in the verbal elements of the earlier trade marks. In signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30). Applying the aforementioned principle, the above-described different beginnings of the verbal elements will be the parts that will first catch consumers’ attention and will be remembered more clearly than the coinciding endings. Consequently, when determining the visual similarity between the signs in the present case, the coinciding endings of the verbal elements cannot outweigh the different beginnings.
Moreover, the signs also differ in the additional figurative elements of the earlier marks, namely a star and a triangle in EUTM No 13 924 261 and a star in Benelux trade mark No 980 595, which, although of limited distinctiveness, cannot be completely overlooked.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the verbal elements of the signs coincides in the second syllable, ‛DIS’, present identically in both earlier trade marks and in the contested sign. The pronunciation differs in the first syllable, namely ‘NE’ in the earlier trade marks and ‘SEN’ in the contested sign. Since the pronunciation of the beginnings of the signs, the parts of the marks that will be perceived first by the consumers, is significantly different, the commonality in the endings leads to only a low degree of aural similarity between the marks.
The figurative elements of the earlier trade marks will not be pronounced when referring to the trade marks and, consequently, they are not subject to an aural assessment.
Conceptually, the verbal elements of the earlier trade marks have no meaning. The figurative elements of the earlier trade marks, namely the star in both earlier marks and the triangle in the earlier EUTM, although they have a low degree of distinctiveness, as stated above, will be perceived as such by the relevant public. The contested sign is a word mark consisting of a word that has no meaning for the relevant public.
Therefore, 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 marks
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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, both earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of both earlier trade marks 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, all the contested goods are deemed identical to those of the earlier trade marks. The relevant public’s degree of attention is average. The signs are similar to a low degree visually and aurally and no conceptual similarity was established. The distinctiveness of both earlier trade marks is average.
As stated in section c) of this decision, the most distinctive element of the earlier marks is the verbal element. However, the verbal elements of the earlier marks and the contested sign coincide only in their endings, namely the last three letters, whereas their beginnings are different in that they start with different letters, ‘N’ and ‘S’, respectively. Furthermore, the order of the letters ‘N’ and ‘E’ in the first of the two syllables is reversed. Taking into account that the beginning of a sign is what first catches the consumer’s attention, the commonality in the endings of the verbal elements cannot be attributed more importance than the different beginnings. Furthermore, although the figurative elements have a lower degree of distinctiveness than the verbal elements as stated in section c) of this decision, due to their size and position, they will be perceived by the relevant public. The overall graphic depiction of the earlier trade marks will not be ignored by the relevant consumer and, consequently, it will contribute to the differences between the signs.
Since the differing letters at the beginnings of the verbal elements are aurally and visually different, this, along with the differences in the colours and overall composition between the earlier trade marks and the contested sign, is sufficient, in the Opposition Division’s view, to dispel a likelihood of confusion. Consequently, the fact that the verbal elements ‘NEDIS’ and ‘SENDIS’ coincide in the last three letters does not by itself lead to a finding of likelihood of confusion and the Opposition Division considers that the consumer will be able to safely distinguish the signs.
Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Michaela SIMANDLOVA | Birute SATAITE-GONZALEZ | 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.
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.