V | Decision 2763350
Date Published: Sep 25, 2017
OPPOSITION No B 2 763 350
Kainotomies Verde-Kyvika Logika Paignidia A.E.B.E. (Verdes Innovations S.A.), Chiliomodi Str., 20008 Chiliomodi Korinthias, Greece (opponent), represented by Law Offices of Patrinos & Kilimiris, Hatziyianni Mexi Street 7, 115 28 Athens, Greece (professional representative)
a g a i n s t
Vinaya Technologies Ltd, 5 Standard Place, Rivington Street, London EC2A 3BE, United Kingdom (applicant), represented by MW Trade Marks Ltd., 88 Kingsway, London WC2B 6AA, United Kingdom (professional representative).
On 17/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 763 350 is partially upheld, namely for the following contested goods and services:
Class 9: Computer software for wireless data communication for receiving, processing, transmitting and displaying mobile phone messages; downloadable electronic publications; electronic hands-free units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; electronic communication equipment and instruments; wireless communication devices for voice, data or image transmission; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; computer software for use on hands-free mobile digital electronic devices and other consumer electronics; electronic mail and messaging software; downloadable electronic publications; computer software for accessing, browsing and searching online databases; audio speakers; speakers for computers; speakers for homes; laptop bags; leather cases for mobile phones; stands for electronic devices; cabinets for electronic devices; electronic apparatus with multimedia functions for use with all of the aforesaid goods.
Class 28: Games; toys; playing cards.
Class 35: Retail services connected with computer software for wireless data communication for receiving, processing, transmitting and displaying mobile phone messages; retail services connected with electronic components for wearable technology’ downloadable electronic publications, electronic hands-free units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information, electronic communication equipment and instruments, wireless communication devices for voice, data or image transmission; retail services connected with computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; retail services connected with computer software for use on hands-free mobile digital electronic devices and other consumer electronics, electronic mail and messaging software, computer software for accessing, browsing and searching online databases, smart speakers; retail services connected with jewellery, rings, bracelets, necklaces, pendants, earrings, precious stones for jewellery, jewellery of precious metal, fashion jewellery, jewellery, including imitation jewellery and plastic/leather jewellery; retail services connected with printed material, printed publications, newsletters; retail services connected with bags, luggage, wallets, rucksacks, handbags, leather cases for mobile phones, leather laptop bags, leather vanity cases, leather straps, leather laces, leather watch straps, leather thongs; retail services connected with furniture, stands for electronic devices, cabinets for electronic devices, mirrors, desks, chairs; retail services connected with blankets, pillow cases; retail services connected with clothing, footwear, headgear; retail services connected with games, toys; wholesale services connected with computer software for wireless data communication for receiving, processing, transmitting and displaying mobile phone messages; wholesale services connected with electronic components for wearable technology, downloadable electronic publications, electronic hands-free units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information, electronic communication equipment and instruments, wireless communication devices for voice, data or image transmission; wholesale services connected with computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; wholesale services connected with computer software for use on hands-free mobile digital electronic devices and other consumer electronics, electronic mail and messaging software, computer software for accessing, browsing and searching online databases, smart speakers; wholesale services connected with jewellery, rings, bracelets, necklaces, pendants, earrings, precious stones for jewellery, jewellery of precious metal, fashion jewellery, jewellery, including imitation jewellery and plastic/leather jewellery; wholesale services connected with printed material, printed publications, newsletters; wholesale services connected with bags, luggage, wallets, rucksacks, handbags, leather cases for mobile phones, leather laptop bags, leather vanity cases, leather straps, leather laces, leather watch straps, leather thongs; wholesale services connected with furniture, stands for electronic devices, cabinets for electronic devices, mirrors, desks, chairs; wholesale services connected with blankets, pillow cases; wholesale services connected with clothing, footwear, headgear; wholesale services connected with games, toys.
Class 41: Provision of education services; provision of education services relating to yoga and meditation; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats relating to smarter use of technology; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats relating to improving inter-personal skills; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats relating to lifestyle advice; providing non-downloadable electronic publications including reports relating to scientific research; information, advisory and consultancy services relating to the above.
2. European Union trade mark application No 15 448 913 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some the goods and services of European Union trade mark application No 15 448 913, namely against all the goods and service in Classes 9, 28, 35 and 41. The opposition is based on, inter alia, European Union trade mark registration No 13 838 198. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 838 198.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; fire-extinguishing apparatus; recorded content; information technology and audiovisual equipment; magnets; magnetizers; games software; software for the creation of individual games, toys and educational teaching products.
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; toys; novelties; educational playthings.
Class 35: Advertising in relation to the tailor-made production of toys for third parties; office functions in relation to the tailor-made production and commercialization of toys for third parties; retail and wholesale services in connection with paper, cardboard, 3D decals for use on any surface, labels, advertisement signs of paper and cardboard, cards, albums, art etchings and prints, beer mats, boxes made of paper and cardboard, packaging of paper and cardboard, catalogues, coasters made of paper and cardboard, planners, diaries, agendas, gift certificates, gift wrapping paper, paper table linen, stickers, works of art and figurines of paper and cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printers’ type, printing blocks; retail and wholesale services in connection with key rings made of plastic, non-metallic key rings, furniture, mirrors, picture frames, action figures, advertising display boards, art works of wood, wax, plaster or plastic, baskets, bottle racks, boxes made of plastic or wood, corks, statues, works of art, decorations, figurines and ornaments of plaster, plastics, wood, bone, wax or ivory; retail and wholesale services in connection with clothing, footwear, headgear; retail and wholesale services in connection with games and playthings, gymnastic and sporting articles, decorations for Christmas trees, toys, novelties, educational playthings.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; organization and performance of conferences, exhibitions and competitions; performance of games.
The contested goods and services are the following:
Class 9: Computer software for wireless data communication for receiving, processing, transmitting and displaying mobile phone messages; electronic components for wearable technology; downloadable electronic publications; electronic hands-free units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; electronic communication equipment and instruments; wireless communication devices for voice, data or image transmission; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; computer software for use on hands-free mobile digital electronic devices and other consumer electronics; electronic mail and messaging software; downloadable electronic publications; computer software for accessing, browsing and searching online databases; audio speakers; speakers for computers; speakers for homes; laptop bags; leather cases for mobile phones; stands for electronic devices; cabinets for electronic devices; electronic apparatus with multimedia functions for use with all of the aforesaid goods.
Class 28: Games; toys; playing cards.
Class 35: Retail services connected with computer software for wireless data communication for receiving, processing, transmitting and displaying mobile phone messages; retail services connected with electronic components for wearable technology’ downloadable electronic publications, electronic hands-free units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information, electronic communication equipment and instruments, wireless communication devices for voice, data or image transmission; retail services connected with computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; retail services connected with computer software for use on hands-free mobile digital electronic devices and other consumer electronics, electronic mail and messaging software, computer software for accessing, browsing and searching online databases, smart speakers; retail services connected with jewellery, rings, bracelets, necklaces, pendants, earrings, precious stones for jewellery, jewellery of precious metal, fashion jewellery, jewellery, including imitation jewellery and plastic/leather jewellery; retail services connected with printed material, printed publications, newsletters; retail services connected with bags, luggage, wallets, rucksacks, handbags, leather cases for mobile phones, leather laptop bags, leather vanity cases, leather straps, leather laces, leather watch straps, leather thongs; retail services connected with furniture, stands for electronic devices, cabinets for electronic devices, mirrors, desks, chairs; retail services connected with blankets, pillow cases; retail services connected with clothing, footwear, headgear; retail services connected with games, toys; wholesale services connected with computer software for wireless data communication for receiving, processing, transmitting and displaying mobile phone messages; wholesale services connected with electronic components for wearable technology, downloadable electronic publications, electronic hands-free units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information, electronic communication equipment and instruments, wireless communication devices for voice, data or image transmission; wholesale services connected with computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; wholesale services connected with computer software for use on hands-free mobile digital electronic devices and other consumer electronics, electronic mail and messaging software, computer software for accessing, browsing and searching online databases, smart speakers; wholesale services connected with jewellery, rings, bracelets, necklaces, pendants, earrings, precious stones for jewellery, jewellery of precious metal, fashion jewellery, jewellery, including imitation jewellery and plastic/leather jewellery; wholesale services connected with printed material, printed publications, newsletters; wholesale services connected with bags, luggage, wallets, rucksacks, handbags, leather cases for mobile phones, leather laptop bags, leather vanity cases, leather straps, leather laces, leather watch straps, leather thongs; wholesale services connected with furniture, stands for electronic devices, cabinets for electronic devices, mirrors, desks, chairs; wholesale services connected with blankets, pillow cases; wholesale services connected with clothing, footwear, headgear; wholesale services connected with games, toys.
Class 41: Provision of education services; provision of education services relating to yoga and meditation; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats relating to smarter use of technology; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats relating to improving inter-personal skills; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats relating to lifestyle advice; providing non-downloadable electronic publications including reports relating to scientific research; information, advisory and consultancy services relating to the above.
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 recorded content includes various materials, such as software, maintained on a memory device. The contested computer software for wireless data communication for receiving, processing, transmitting and displaying mobile phone messages; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; computer software for use on hands-free mobile digital electronic devices and other consumer electronics; electronic mail and messaging software; computer software for accessing, browsing and searching online databases overlap with the opponent’s recorded content, to the extent that the former can be recorded. Therefore, they are identical.
The contested downloadable electronic publications are electronic versions of traditional media, such as e-books, electronic journals, online magazines, online newspapers, etc. They are included in the broad category of the opponent’s recorded content. Therefore, they are identical.
The opponent’s information technology and audiovisual equipment are broad categories that can include devices that have a primary function related to the collection, transfer, storage or processing of data, as well as devices containing both sound and visual components.
Therefore, the contested electronic hands-free units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; electronic communication equipment and instruments; wireless communication devices for voice, data or image transmission; electronic apparatus with multimedia functions for use with all of the aforesaid goods (‘aforesaid goods’ indicates all the contested goods in Class 9) are included in the broad category of, or overlap with, the opponent’s information technology and audiovisual equipment. Therefore, they are identical.
The contested audio speakers; speakers for computers; speakers for homes; cabinets for electronic devices are included in the broad category of the opponent’s apparatus for transmission or reproduction of sound. Therefore, they are identical.
The contested laptop bags; leather cases for mobile phones; stands for electronic devices are similar to the opponent’s information technology and audio-visual equipment, as they can all be accessories for the opponent’s goods. Therefore, they can have the same producers, relevant public and distribution channels. Furthermore, they are complementary.
The contested electronic components for wearable technology are mechanisms, such as capacitors, resistors, connectors, etc., through which wearable technology devices work. They do not have anything relevant in common with the opponent’s goods and services in Classes 9, 28, 35 and 41, as their purposes are different and they do not usually have the same producers, distribution channels and relevant public. Moreover, they are not in competition with each other. Even if both the opponent’s data processing equipment and the opponent’s information technology equipment (which can include the ‘wearable technology’ for which the contested ‘electronic components’ are intended) are composed of several ‘electronic components’, this does not establish automatic similarity between the finished products (i.e. data processing equipment and information technology equipment) and their electronic components unless some of the main factors for a finding of similarity are fulfilled. The opponent’s data processing equipment, information technology equipment and the contested electronic components for wearable technology are normally produced by different undertakings, as the manufacturers of the end product are in general not the same as the manufacturers of its components. Moreover, these goods are not distributed through the same channels and they target different publics. Therefore, the contested goods are dissimilar to all the opponent’s goods and services.
Contested goods in Class 28
Games; toys are identically contained in both lists of goods.
The contested playing cards are included in the broader category of the opponent’s playthings. Therefore, they are identical.
Contested services in Class 35
These contested services are retail and wholesale services related to different kind of goods, such as computer software, jewellery, printed matters, furniture, bags, wallets etc. The opponent’s services in Class 35 include, inter alia, retail and wholesale services related to different kinds of goods, such as advertisement signs of paper and cardboard, furniture, mirrors, picture frames, printed matter etc. Some of the contested services are identical to the opponent’s services (i.e. retail services connected with games are identically contained in both lists of services) and others are at least similar to the opponent’s services, as they have the same nature, the same purpose, of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.
Contested services in Class 41
The contested provision of education services; provision of education services relating to yoga and meditation; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats relating to smarter use of technology; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats relating to improving inter-personal skills; arranging, conducting and organisation of meetings, seminars, symposia, workshops, lectures and retreats relating to lifestyle advice; information, advisory and consultancy services relating to the above are identical to the opponent’s education services, as they are identical to or included in the opponent’s services.
The contested providing non-downloadable electronic publications including reports relating to scientific research are similar to the opponent’s education, as they can have the same producers, relevant public and distribution channels. Furthermore, they are complementary.
The contested information, advisory and consultancy services relating to the above [providing non-downloadable electronic publications including reports relating to scientific research] are similar to the opponent’s education, as they can have the same producers, relevant public 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 relevant goods and services are directed at the public at large and at business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the frequency of purchase, price, or terms and conditions of the purchased goods and services.
- The signs
V | |
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).
Visually, the signs coincide in the letter ‘V’, which is distinctive for the goods and services in question, as it is not meaningful in relation to them or their characteristics. However, they differ in stylisation of the letter in the contested sign, which is standard, and in the square black frame of the contested sign, which is a banal element and, therefore, less relevant.
As a consequence, the sign are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letter ‛V’, present identically in both signs.
Therefore, the marks are aurally identical.
Conceptually, the signs will be associated with the concept of the letter ‘V’, which the signs have in common. Considering that the additional figurative element of the contested sign (i.e. the square black frame) does not convey any concept that would alter the conceptual perception of the sign, they are conceptually identical.
As the signs have been found similar, 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 and 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
In the present case, the goods and services are partly identical, partly similar and partly dissimilar.
The length of the signs may influence the effect of the differences between them and, the shorter a sign, the more easily the public is able to perceive all of its single elements. However, in the present case, the signs are visually similar to a high degree and aurally and conceptually identical to the extent that they coincide in the letter ‘V’, which is the only element of the earlier mark and the only verbal element of the contested sign. Moreover, the differences arising from the very limited stylisation of the letter ‘V’ and the square black frame of the contested mark have less impact on the global impression created by the signs, as mentioned above in section c).
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/services covered are from the same or economically linked undertakings.
In the present case, taking all the above into account, the Opposition Division is of the opinion that consumers, when encountering the signs in relation to identical or similar goods and services, are likely to think that they come from the same undertaking or from economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 13 838 198.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
The opponent has also based its opposition on earlier European Union trade mark registration No 7 034 044 , registered for cubic logic toys in Class 28.
Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
María Belén IBARRA DE DIEGO | Angela DI BLASIO | María Clara IBÁÑEZ FIORILLO |
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.