TenX | Decision 2718438
Date Published: Sep 24, 2017
OPPOSITION No B 2 718 438
Secosilva Empresarial, S.L., C/Goya, 9- 4º Izqda., 28001 Madrid, Spain (opponent), represented by Sogeprin, S.L., Calle Orgaz, 10 7ºC, 28019 Madrid, Spain (professional representative)
a g a i n s t
Tencent Holdings Limited, P.O. Box 2681 GT, Century Yard, Cricket Square, Hutchins Drive, George Town, Grand Cayman, Cayman Islands (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative).
On 21/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 718 438 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 services of European Union trade mark application No 15 048 747 (word mark: “TenX”), namely against some of the services in Class 41. The opposition is based on European Union trade mark registration No 13 816 624 (figurative mark: “”). The opponent invoked Article 8(1)(a) and 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 services
The services in Class 41 on which, inter alia, the opposition is based are the following:
Education; providing of training; entertainment; sporting and cultural activities.
The contested services in Class 41 are the following (after the limitation made pursuant to the applicant’s letter of 13/09/2016):
Education; providing of training; entertainment; sporting and cultural activities.
Education; providing of training; entertainment; sporting and cultural activities are identically contained in both lists of services.
- 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 services found to be identical are directed at the public at large, which has an average degree of attention.
- The signs
TenX | |
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 contested sign is a word mark which is protected in all different typefaces.
The earlier trade mark is a figurative mark with three word elements of different sizes set over two lines and written in a special typeface.
The earlier mark has no elements that could be considered clearly more distinctive than other elements.
The earlier mark has no elements that could be considered clearly more dominant than other elements.
The contested sign, as a word mark, cannot have any dominant elements. Furthermore, it is distinctive, because, taken as a whole, it has no comprehensible meaning.
Visually, the signs are completely different lengths: the earlier trade mark has nine letters, and the contested mark has four letters. Therefore, the earlier trade mark is more than double the length of the contested sign. Furthermore, the earlier trade mark consists of three word elements, arranged as described above, and the contested sign has only one word. In addition, the figurative elements of the earlier trade mark have to be taken into account. The fact that the word ‘TEN’ is depicted twice in the earlier trade mark means that it creates a strong visual impression. The letter ‘X’ is only part of the contested sign. Given that ‘TEN’ is the only coinciding element in the signs, there is only a low degree of visual similarity.
Aurally, the figurative elements of the contested sign will not be pronounced. The earlier trade mark will be pronounced in accordance with the different rules in the relevant territories in three syllables, namely ‘TEN-K(C)ON-TEN’. The contested sign will be pronounced in one syllable, namely ‘Tenx’, or in two syllables, ‘Ten-X’. In the first possible pronunciation of the signs, they are aurally similar to a low degree, because none of their syllables is the same. In the second version, the first syllables are the same, but the pronunciation of the rest of the signs is clearly different in nearly every aspect. The signs have different rhythms, pronunciations and intonations, which leads, at best, to a lower than average degree of aural similarity.
Conceptually, neither of the signs has a comprehensible meaning in its entirety. The English-speaking public may perceive a reference to the number ‘10’ in both signs, resulting in the presence of an identical conceptual concept in the signs, but the degree of similarity is reduced by the fact that ‘TEN’ appears twice in the earlier trade mark. For this part of the public, the signs are conceptually similar to an average degree. For those Spanish consumers who recognise the word ‘CON’, having the meaning ‘with’, in the earlier trade mark, the signs are conceptually not 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 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
The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).
The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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 trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (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).
The contested services are identical.
The signs are visually similar to a low degree and aurally similar, at best, to a lower than average degree.
Taking into account the relevant visual and aural differences between the signs, the no more than normal degree of distinctiveness of the earlier trade mark and the average degree of attention of the relevant consumers, there is, even for identical services and taking into account the average degree of conceptual similarity for the English-speaking public, no likelihood of confusion.
Contrary to the opponent’s arguments, the differences between the signs are sufficient to prevent a likelihood of confusion. The public will not think that the signs come from the same undertaking or economically linked undertakings.
Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.
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
Magnus ABRAMSSON | Peter QUAY | Martin EBERL |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.