Venus Wolf | Decision 2791864
Date Published: Sep 24, 2017
OPPOSITION No B 2 791 864
Asal Vision S.L., Marmolista 8 – 10, 29013 Malaga, Spain (opponent), represented by Iberpatent, Félix Boix 9 – 1° Derecha, 28036 Madrid, Spain (professional representative)
a g a i n s t
Shenzhen Langxing Tianxia Electronic Technology Co. Ltd, 1/F Bldg D,Yiyuantong Industry Zone Xuexiang Community, Bantian Str., Shenzhen, People’s Republic of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand 6 - 5ª planta, 28050 Madrid, Spain (professional representative).
On 28/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 791 864 is partially upheld, namely for the following contested goods:
Class 9: Pedometers; microphones; audio- and video receivers; camcorders; portable media players; video baby monitors; flashlights [photography]; selfie sticks; detectors; food analysis apparatus; telescopic sights for artillery; sunglasses; 3d spectacles; rechargeable batteries; computer peripheral devices; smartglasses; smartwatches.
2. European Union trade mark application No 15 601 834 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 601 834 namely against all the goods in Class 9. The opposition is based on Spanish trade mark registration No 3 522 347. 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: Optical apparatus and instruments, specially sunglasses and correcting glasses, lens, eyeglasses and their parts, as frames, arms, bridges; cases adapted for optical articles, sunglasses, eyeglasses and their accessories.
The contested goods are the following:
Class 9: Pedometers; display screen protectors in the nature of films for mobile phones; cabinets for loudspeakers; microphones; audio- and video receivers; camcorders; portable media players; video baby monitors; flashlights [photography]; selfie sticks; detectors; food analysis apparatus; telescopic sights for artillery; sunglasses; 3d spectacles; rechargeable batteries; computer peripheral devices; smartglasses; smartwatches; covers for smartphones.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘specially’ used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
Sunglasses are identically contained in both lists of goods.
The contested microphones; audio- and video receivers; camcorders; portable media players; video baby monitors; flashlights [photography]; telescopic sights for artillery; 3d spectacles are included in the broad category of, or overlap with, the opponent’s optical apparatus and instruments. Therefore, they are identical.
The contested pedometers; selfie sticks; detectors; food analysis apparatus; computer peripheral devices; smartglasses; smartwatches consist of data processing devices, meaning electrically operated apparatus that accumulate, process and/or store data with various purposes. They are similar to the opponent’s optical apparatus and instruments, as they coincide in producers, end users and distribution channels. Furthermore they are complementary.
The contested rechargeable batteries are apparatus for accumulating electricity. They are similar to the opponent’s optical apparatus and instruments as they can coincide in producers, end users and distribution channels. Furthermore they are complementary.
The contested display screen protectors in the nature of films for mobile phones; cabinets for loudspeakers; covers for smartphones are accessories for mobile phones and loudspeaker containers. These goods are dissimilar to the opponent’s goods in Class 9, which consist of optical apparatus and articles. In fact, they have different natures, purposes and methods of use. They do not have the producers. They are not complementary to or in competition with each other.
- 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 the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the sophistication, specialised nature and/or terms and conditions of the purchased goods.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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 a figurative mark that includes the word ‘VENUS’ in slightly stylised upper case black letters. The verbal element will be perceived as indicating the Roman divinity of beauty and love, as well as a planet of the solar system. Due to the lack of any connection with the relevant goods, the element is distinctive. The mark also comprises two figurative elements consisting of two horizontal curve lines placed on top and underneath the verbal portion of the mark. These components of the mark lack of any distinctive character, due to their simplicity and merely decorative purpose.
The contested sign is composed of the words ‘VENUS’ and ‘WOLF’ in slightly stylised title case black characters. Both the elements are distinctive: the first for the reasons explained above and the second due to the lack of meaning for the relevant public.
The marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the distinctive verbal element ‘VENUS’, which constitutes the entire verbal portion of the earlier mark. They differ in the verbal element ‘WOLF’ of the contested sign, which has no counterpart in the earlier mark and in elements of secondary relevance, namely the non-distinctive graphic devices of the earlier mark and the stylisation of the marks. Indeed, 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).
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, the difference in the word ‘WOLF’ will have less significance than the commonality in the first element of the contested sign.
Therefore, and considering that the earlier mark is identically reproduced in the contested sign, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VENUS’, present identically in both signs and differs in the sound of the letters ‘WOLF’ of the contested mark, which has no counterpart in the contested mark.
Therefore, considering that the earlier mark is entirely contained in the first part of the contested sign, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the concept conveyed by the word ‘VENUS’, they are conceptually highly 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 relevant goods have been found partly identical, partly similar and partly dissimilar. They target the general and professional public, whose level of attention varies from average to high. The earlier mark has a normal degree of distinctive character.
The signs are visually and aurally similar to an average degree, as well as conceptually highly similar, as a result of the coinciding word ‘VENUS’, which forms the entirety of the verbal portion of the earlier mark, and the initial part of the contested sign. The marks essentially differ in the second element of the contested sign, which is placed where consumers do not focus their attention, in the non-distinctive figurative device of the earlier mark and in the less relevant stylisation of the marks.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Taking all the above into account and emphasising, in particular, the fact that the earlier trade mark, which has an average degree of distinctiveness, is included in its entirety in the contested sign, the Opposition Division considers that the similarities between the signs are sufficient to offset the differences between them.
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 covered are from the same or economically linked undertakings. In the present case, it is possible that the relevant consumer will perceive the mark applied for 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, possible that the targeted public may regard the goods designated by the trade mark applied for as belonging to two ranges of goods coming, nonetheless, from the same undertaking.
Therefore, taking into account all relevant factors, it is considered that, even if average consumers and professionals were capable of detecting certain visual and aural differences between the two conflicting signs, the similarities between the signs are sufficient to consider that there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 522 347. It follows that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods and services 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 and services cannot be successful.
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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Andrea VALISA | Orsola LAMBERTI | Michele M. BENEDETTI-ALOISI |
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.