TM | Decision 2670175
Date Published: Sep 28, 2017
OPPOSITION No B 2 670 175
Tele München Fernseh GmbH & Co Produktionsgesellschaft, Kaufingerstr. 24, 80331 München, Germany (opponent), represented by Heisse Kursawe Eversheds, Brienner Straße 12, 80333 München, Germany (professional representative)
a g a i n s t
Quanta Storage Inc., 3F No.188, Wenhua 2nd Rd., Guishan Dist, Taoyuan City 333, Taiwan (applicant), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 670 175 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 14 733 257, namely against all the goods in Class 9. The opposition is based on international trade mark registration No 1 066 161 designating the European Union and Austria and international trade mark registration No 1 039 925 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely, international trade mark registration No 1 066 161 designating the European Union and Austria and international trade mark registration No 1 039 925 designating the European Union.
In the present case the contested trade mark was published on 15/12/2015.
Earlier trade marks No 1 066 161 and No 1 039 925 are international registrations designating, inter alia, the EU. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.
The date of publication pursuant to Article 152(2) EUTMR is 15/05/2012 for earlier mark No 1 066 161 and 29/04/2011 for earlier mark No 1 039 925. Since the earlier marks had not been registered for at least five years at the date of publication of the contested sign, the request for proof of use for the European Union is inadmissible.
In addition, earlier mark No 1 066 161 is an international registration designating the individual Member State of Austria. Each Member State has either a 12 or 18 month deadline to issue a provisional refusal under the Madrid Protocol. Where a provisional refusal is issued within this deadline, the date that will be decisive in determining whether the mark is subject to proof of use obligation is the date when the proceedings leading to the provisional refusal are concluded, namely when the Statement of Grant of Protection is issued. Additionally, where a provisional refusal has not been issued, but a Statement of Grant of Protection is issued prior to the expiry of the 12 or 18 month deadline, this will be the decisive date.
For the designation of Austria, the Statement of Grant of Protection was published by WIPO on 01/09/2011. It can be inferred from this date that the earlier mark had not been protected for at least five years on the relevant date. Therefore, the request for proof of use for the Member State of Austria is inadmissible.
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:
(1) International registration No 1 066 161 designating the European Union and Austria (referred to hereafter as ‘earlier mark 1’)
Class 9: Recorded and unrecorded data carriers, magnetic data carriers and image and sound carriers (except unexposed films), in particular recording discs, compact discs, audiotapes, sound cassettes (compact cassettes), optical video disks, video films, video cassettes and videotapes, exposed films, CD-ROMs, DVDs, laser discs, video games (included in this class); computer programs, games programs for computers and computer software (stored) including computer and video games (software) recorded on data carriers; computer programs, games programs for computers and computer software (stored) including computer and video games (software) downloadable from the Internet.
Class 35: Retail services featuring the goods of class 9.
(2) International registration No 1 039 925 designating the European Union (referred to hereafter as ‘earlier mark 2’)
Class 9: Unrecorded data carriers, sound carriers, recording discs, audiotapes, sound cassettes (compact cassettes), video cassettes and videotapes, exposed films, video games (included in this class); games programs recorded on data carriers including computer and video games (software); games programs downloadable from the internet including computer and video games (software).
The contested goods are the following:
Class 9: Solid state drives.
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 solid state drives are non-volatile storage devices that store persistent data using solid-state flash memory and are considered similar to a high degree to the opponent’s unrecorded data carriers, contained in the lists of goods of earlier marks 1 and 2, which include different types of unrecorded storage media (magnetic, optical, etc.). These goods have the same purpose and can be in competition with each other. Moreover, they can have the same producers, relevant consumers and distribution channels.
- 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 similar (to a high degree) are directed at both the public at large and business consumers with specific knowledge and expertise in the field of computing.
The degree of attention is considered higher than average, since the relevant consumers usually pay particular attention when choosing a primary drive (storage device) for their computer.
- The signs
Earlier mark 1 TMG Earlier mark 2 (Earlier marks 1 and 2 are referred to collectively as ‘the earlier marks’) | |
Earlier marks | Contested sign |
The relevant territories are the European Union and Austria.
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 mark 1 is a figurative mark, consisting of the following elements: the upper case letters ‘TM’, which are connected to each other and depicted in a stylised black typeface with black and white outline; underneath these letters, the word ‘INTERNATIONAL’, depicted in much smaller letters in a standard grey typeface; a black rectangular frame around both of those verbal elements; and, at the bottom of the mark, five black and dark-grey squares arranged in a line.
Earlier mark 2 is a word mark, ‘TMG’. In relation to the relevant goods, the distinctiveness of the verbal element ‘TMG’ is seen as normal, since it does not directly describe or allude to any characteristics of the relevant goods in a manner that could affect its distinctiveness in a material way.
The contested sign is a figurative mark consisting of thick lines in blue and red, which will be perceived by part of the relevant public as depicting the stylised alphanumerical combinations ‘TV1’or ‘7V1’, with ‘V1’ depicted in red and the first element, ‘7’ or ‘T’, in blue. On the other hand, part of the public might perceive the contested sign as a stylised letter ‘M’ depicted in two colours or as ‘7M’ or ‘TM’, with the letter ‘M’ depicted in two colours and the blue part of it overlapping with either the lower part of the numeral ‘7’ or the lower part of the highly stylised letter ‘T’ (which is missing the arm extending to the right). Considering the various possible perceptions of the contested sign, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the public that perceives the contested sign as portraying the stylised upper case letters ‘TM’ merged together. This part of the relevant public would be more likely to confuse the signs, in view of the coincidence in the letters ‘TM’, and this scenario therefore constitutes the opponent’s best-case scenario.
The distinctiveness of the element ‘TM’ in earlier mark 1 and the contested sign is seen as normal, since it does not directly describe or allude to any characteristics of the relevant goods in a manner that could affect its distinctiveness in a material way.
The word ‘INTERNATIONAL’ in earlier mark 1 will be perceived as referring to something that concerns or involves two or more nationalities or countries, either because it is a basic English word, commonly used in the course of trade to indicate that a given undertaking operates in more than one country, or because there is a very similar equivalent word in the official languages in the relevant territory (e.g. internacional in Spanish, international in Dutch, internationell in Swedish, internațional in French, internazionale in Italian, etc.). In relation to the relevant goods, this word is considered weak, since it merely refers to the availability of the opponent’s goods in more than one country. The remaining figurative elements of earlier mark 1, namely the rectangular frame and the five squares, are of a purely decorative nature and the relevant consumers will not pay much attention to them. Therefore, the element ‘TM’ is considered the most distinctive and, due to its size and position, the most dominant (visually eye-caching) element of earlier mark 1.
The contested sign does not have any element that could be considered more dominant (visually eye-caching) or more distinctive than other elements.
Visually, earlier mark 1 and the contested sign are similar to the extent that they both depict the upper case letters ‘TM’. However, they differ in all other aspects. In earlier mark 1, the letters ‘TM’ are depicted in a thick black font with a continuous black and white border joining the letters together. The white line runs through the middle of the letter ‘M’, creating a folded effect, and the letter may, alternatively, be perceived as two partially overlapping inverted upper case letters ‘V’. The contested sign, on the other hand, features an upper case letter ‘M’ the right leg and the middle part of which are depicted in shades of red, creating a three-dimensional effect (as of three folded parts), and the remaining left leg is in blue, at a slightly different angle from and thicker than the right leg, which creates an impression of asymmetry. The blue part of the letter ‘M’ also overlaps with the descending part of an asymmetrical stylised letter ‘T’, which has only one horizontal arm, in blue, the right arm being cut off or disappearing at the top of the letter ‘M’; in fact, the relevant consumers may not even perceive the letter ‘T’ in the mark at first sight.
In addition, the signs also differ in the remaining, secondary, elements of earlier mark 1, namely the word ‘INTERNATIONAL’, the rectangular frame, the five black and dark-grey squares arranged in line, which, even though they are weak, create additional visual differences between the marks.
The opponent claims that the graphic depictions of the distinctive element ‘TM’ in earlier mark 1 and in the contested sign coincide in certain aspects, namely the fusion of the characters ‘TM’ and their relief effects. However, the Opposition Division considers that the ways in which these features are depicted in the signs (the two-dimensional effect created by the distinctive element ‘TM’ of earlier mark 1 versus the three-dimensional effect created by the contested sign; the ways in which the letters ‘TM’ are depicted and joined together; their colours; and the particularly striking graphic depiction of the contested sign) create significant visual differences that will not go unnoticed by the relevant consumers.
Earlier mark 2 and the contested sign are similar to the extent that they coincide in the letters ‘TM’, which constitute the contested sign in its entirety and form the first two letters of earlier mark 2, ‘TMG’. The marks differ in the graphic depiction of the contested sign (as described above) and in the additional last letter, ‘G’, of earlier mark 2.
As the opponent correctly points out, according to established practice, when figurative marks with verbal elements and word marks are compared visually, two factors should be taken into account: first, whether or not the signs have in common a significant number of letters in the same order and, second, whether or not the verbal element in the figurative sign is highly stylised. In the present case, earlier mark 2 and the contested sign have in common two letters out of three. However, account needs to be taken of the fact that the signs under comparison are short signs and, according to the established practice, in short signs even small differences may lead to different visual impressions, since the public is able more easily to perceive all of their single elements. Consequently, the highly stylised nature of the contested sign (as described in detail above) and the fact that earlier mark 2 has an additional third letter, ‘G’, will create significant visual differences between the marks.
Considering all above, the visual impression created by the contested sign has clearly perceptible differences from those created by the earlier marks. Therefore, the signs are considered visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the earlier marks and the contested sign coincides in the sound of the letters /TM/, present identically in all the signs. The pronunciation differs in the sound of the letters /INTERNATIONAL/ of earlier mark 1 and in the sound of the last (third) letter, ‘G’, of earlier mark 2, which have no counterparts in the contested sign.
Bearing in mind the weight attributed to the verbal element ‘INTERNATIONAL’ of earlier mark 1 (as detailed above), the signs are considered aurally similar to a high degree.
Since earlier mark 2 will be pronounced as /TMG/ and the addition of one letter in a short sign will create a noticeable aural difference from the contested sign, the signs are considered aurally similar to an average degree.
Conceptually, although the public in the relevant territory will perceive the meaning of the word ‘INTERNATIONAL’ of earlier mark 1, the contested sign will have no meaning in that territory. Since the contested sign will not be associated with any meaning, the signs are not conceptually similar.
Neither earlier mark 2 nor the contested sign has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 marks 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, the 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 the earlier marks must be seen as normal, despite the presence of some weak elements in earlier mark 1 as stated above in section c) of this decision
- 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/or 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).
As concluded above, the contested goods are similar to a high degree to the opponent’s goods and they target both the public at large and business consumers; the public’s degree of attention is higher than average.
The earlier marks and the contested sign are considered visually similar to a low degree. Aurally, the contested sign is considered similar to a high degree to earlier mark 1 and similar to an average degree to earlier mark 2. The contested sign is not conceptually similar to earlier mark 1 and the conceptual aspect does not influence the assessment of the similarity between the contested sign and earlier mark 2.
The earlier marks and the contested sign are similar insofar as they have the letters ‘TM’ in common, which constitute the contested sign in its entirety and are the distinctive and dominant element of earlier mark 1 and the first two letters of earlier mark 2, ‘TMG’. However, considering that the signs under comparison are short marks, consisting of two letters (the contested sign and the distinctive element of earlier mark 1) or three letters (earlier mark 2), the way in which these letters appear in each sign is determinant. As explained in detail in section c), the manners in which these letters are depicted in the earlier marks and the contested sign are different to the extent that the signs under comparison were found to be visually similar only to a low degree. These differences are clearly perceptible and sufficient to exclude any likelihood of confusion even in relation to highly similar goods.
Given that the depictions of the signs differ in significant ways, there is no risk that the relevant highly attentive consumers will be misled, even if they are unable to compare the trade marks directly (22/03/2011, T-486/07, CA, EU:T:2011:104 § 95).
Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
For the sake of completeness, the Opposition Division points out that there is no need to compare the signs for the part of the public that does not perceive the contested sign as ‘TM’, since the outcome would not be different. Indeed, if there is no likelihood of confusion for those consumers who perceive the contested sign as ‘TM’, a fortiori, there is no likelihood of confusion for those consumers who will perceive it in other ways, since for these consumers the signs under comparison will be even more different.
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
Anunciata SEVA MICO | Rasa BARAKAUSKIENE | Plamen IVANOV |
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.