WAWEI | Decision 2683319
Date Published: Sep 25, 2017
OPPOSITION No B 2 683 319
Huawei Technologies Co., Ltd., Administration Building Huawei Technologies Co., Ltd. Bantian, Longgang District, Shenzhen, Guangdong 518129, People's Republic of China (opponent), represented by Forresters, Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative)
a g a i n s t
Taiwan Wachine Co. Ltd., 2F, No. 83, Ningbo W. Rd. Jhongjheng District, Taipei City 100, Taiwan (applicant), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative).
On 18/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 683 319 is upheld for all the contested goods.
2. European Union trade mark application No 14 759 096 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 759 096. The opposition is based on European Union trade mark registration No 9 967 291. The opponent invoked Article 8(1)(b) and 8(5) 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, inter alia, the following:
Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products; Edible oils and fats.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; Flour and preparations made from cereals, bread, pastry and confectionery, ices; Honey, treacle; Yeast, baking-powder; Salt, mustard; Vinegar, sauces (condiments); Spices; Ice.
Class 32: Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.
The contested goods are the following:
Class 29: Crystallized fruits; Fruits, tinned [canned (Am.)]; Piccalilli; Pickles; Preparations for making soup; Soups; Vegetable soup preparations.
Class 30: Condiments; Farinaceous foods; Flour; Flour-milling products; Groats for human food; Meal; Muesli; Noodles; Rice; Sauces [condiments]; Seasonings; Cereal-based snack food; Rice-based snack food; Soya sauce; Spring rolls; Tapioca flour for food.
Class 32: Milk of almonds [beverage]; Peanut milk [non-alcoholic beverage].
As a preliminary remark, it is to be noted that the opponent argues that the goods covered by the earlier mark include the goods added in its request for recordal of a declaration under Article 28(8) filed with the Office on 21/09/2016 but which has not yet been processed. However, the Opposition Division notes that since the opposition was filed after 23/03/2016, by virtue of Article 28(9) EUTMR, the comparison of the goods must be made on the basis of the literal meaning of the currently registered goods of the earlier mark and none of the specific goods to be added following the declaration filed can thus be taken into account in the present proceedings.
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 29
The contested crystallized fruits are included in the broad category of the opponent’s preserved (…) fruit. Therefore, they are identical.
The contested fruits, tinned [canned (Am.)] overlap with the broad category of the opponent’s preserved (…) fruit. Therefore, they are identical.
The contested piccalilli is a pickle of mixed vegetables, esp onions, cauliflower, and cucumber, in a mustard sauce and should correctly be classified in Class 30 where sauces and condiments belong. In view of this, it is included in the broad category of the opponent’s sauces (condiments) in Class 30. Therefore, they are identical.
The contested pickles overlap with the broad category of the opponent’s preserved (…) fruit and vegetables. Therefore, they are identical.
The contested preparations for making soup; vegetable soup preparations are similar to the opponent’s preserved, (…) cooked vegetables since they all consist of vegetables in different forms or vegetable-based products. In addition, these contested goods have the same purpose. They are usually produced by the same manufacturers and sold in the same outlets as the opponent’s preserved, (…) cooked vegetables. Moreover, they target the same consumers of vegetables.
Finally, the contested soups are a liquid food made by boiling meat, fish or vegetables in water. These goods have the same purpose and usual producers as the opponent’s preserved, (…) cooked vegetables and they may have the same distribution channels and sales outlets as the opponent’s preserved, (…) cooked vegetables. Therefore, they are similar to these goods.
Contested goods in Class 30
Flour, rice, sauces [condiments] are identically contained in both lists of goods.
The contested condiments include, as a broader category the opponent’s sauces (condiments). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested farinaceous foods, flour-milling products; groats for human food; meal; muesli; noodles; cereal-based snack food; rice-based snack food, tapioca flour for food are included in, or overlap with, the broad category of the opponent’s flour and preparations made from cereals. Therefore, they are identical.
The contested soya sauce is included in the broad category of the opponent’s sauces (condiments). Therefore, they are identical.
The contested seasonings are salt, herbs, or other spices added to food to enhance the flavour. Thus, they are identical to the opponent’s spices.
The contested spring rolls are similar to a low degree to the opponent’s preparations made from cereals as they can coincide in producer, end user and distribution channels.
Contested goods in Class 32
The contested milk of almonds [beverage]; peanut milk [non-alcoholic beverage] are included in the broad category of the opponent’s (…) other non-alcoholic drinks. Therefore, they are identical.
- 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 to varying degrees are directed at the public at large.
The degree of attention is considered to be average.
- The signs
HUAWEI | |
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 earlier sign is a word mark consisting of the word ‘HUAWEI’, which is meaningless in the relevant territory. It is distinctive for the goods at hand.
The contested mark is a figurative mark containing a stylised however clearly perceptible word element, ‘WAWEI’, and a depiction of a smaller Chinese character placed above. The word element ‘WAWEI’ does not convey any meaning in the relevant territory and is therefore of normal distinctiveness. The Chinese character will not be understood by the vast majority of the relevant public and will be perceived as merely decorative in nature. The element ‘WAWEI’ is the dominant element as it is the most eye-catching.
Visually, the signs coincide in the letters ‘AWEI’. However, they differ in ‘HU’ at the beginning of the earlier sign and the ‘W’ (also at the beginning), stylisation of the word element and the Chinese character of the contested sign.
While it is true that the beginning of the marks is the part that first catches the consumer’s attention, it must be recalled that that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks. Indeed, the aforementioned general rule is not applicable in all cases and depends on the specific characteristics of the signs. In the present case, the figurative element will be perceived as a decorative element in the contested sign and, as such, will have a limited effect on the comparison of the signs. This is also because 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).
Therefore, the signs are considered similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in ‘AWEI’. In some languages, such as Polish (in which the letter ‘H’ at the beginning of the words is always pronounced), the differences lie in the pronunciation of ‘HU’ vs. ‘W’. However, part of the relevant public, for example at least part of the Spanish-, and French-speaking consumers will not pronounce the letter ‘H’ at the beginning of the earlier sign, and the letters ‘U’ vs. ‘W’ as appearing in the marks will be pronounced similarly.
Therefore, the signs are similar from an average (for example for Polish-speaking consumers) to a high degree (for example part of the Spanish-, and French-speaking consumers).
Conceptually, neither of the word elements included in the signs under comparison has a meaning for the public in the relevant territory. The Chinese script in the contested sign will not be understood by the public under consideration: it will be seen as merely decorative, as explained above, and consequently, it may reasonably be assumed that the attention of consumers will not be attracted by this element. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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
It has been established in the previous sections of the decision that the contested goods are identical and similar to various degrees to the opponent’s goods. The signs under comparison are considered to be visually and aurally similar to an average degree (aurally highly similar for part of the relevant public) inasmuch as they coincide in the letters/sounds ‘AWEI’.
The differences between the signs are confined to the first letter(s)/sound(s) in the signs (‘HU’ vs ‘W’) and visually also to the figurative element of a Chinese character and stylisation of the word element in the contested sign, which have, however, a limited effect on the comparison of the signs at hand as explained above. Although there is a risk in relying too much on a mechanical quantitative evaluation, it is a fact that counting the total number of letters, identifying the amount of identical letters and comparing their order in the respective marks, can provide certain guidance. In the present case, the verbal elements of the marks share four letters while they consist of six/five letters. The coinciding element is thus longer and occupies more space within the marks which makes it visually and aurally relevant. Thus, the overall impression of the marks, especially from the aural point of view for part of the relevant public, is clearly similar.
This is even truer considering the level of attention of the relevant consumer: the goods in question are addressed to the general public, which pays a normal degree of attention when purchasing them. Although, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind.
In addition, as the signs are meaningless for the relevant public, there is no concept attached to the signs that could help consumers to distinguish one sign from the other.
In its observations, the applicant argues that the signs ‘HUAWEI’ and ‘WAWEI’ coexist in the Taiwanese market and submitted in support of this claim extracts from the Taiwan Intellectual Property Office showing the registration of such signs in that territory. However, it must be noted that for coexistence to be considered a possible factor that may contribute to diminishing the likelihood of confusion, it must concern the countries relevant to the case. Therefore, the alleged coexistence of the signs in dispute in Taiwan is irrelevant when the opposition is based on a European Union trade mark (13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 84). Thus, this argument of the applicant must be set aside.
Considering all the above, 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 European Union trade mark registration No 9 967 291. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Sam GYLLING | Anna BAKALARZ | Adriana VAN ROODEN |
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.