XShuttle | Decision 2602939
Date Published: Sep 28, 2017
OPPOSITION No B 2 602 939
Shuttle Computer Handels GmbH, Fritz-Straßmann-Straße 5, 25337 Elmshorn, Germany (opponent), represented by Claudia Böckmann, Stadthausbrücke 1-3, 20355 Hamburg, Germany (professional representative)
a g a i n s t
Huawei Technologies Co. Ltd., Administration Building Huawei Technologies Co., Ltd., Bantian, Longgang District, Shenzhen, Guangdong 518129, People’s Republic of China (applicant), represented by Forresters, Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative).
On 03/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 602 939 is upheld for all the contested goods.
2. European Union trade mark application No 14 489 959 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 489 959. The opposition is based on, inter alia, German trade mark registration No 30 209 292. 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.
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 German trade mark registration No 30 209 292.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 25/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 25/08/2010 to 24/08/2015 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 9: Computer software and hardware and parts thereof, in particular computer cases, main boards.
On 23/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 23/08/2016 to submit evidence of use of the earlier trade mark. On 03/08/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence to be taken into account is the following:
- A screenshot from the website www.shuttle.eu showing a page summarising the history of the opponent’s mark.
- An affidavit signed by the opponent’s production manager, Christian Fiskas, dated 25/07/2016, stating that the opponent’s company was founded in 1991 and offers ‘barebones, that are semi-finished PCs, all-in-one PCs and complete systems containing of PCs with or without system software, mouse, monitor’. The document also provides information on the countries where the products are sold, and a table giving turnover figures for the opponent’s products in a number of European countries in 2011, 2013 and 2015.
- Several catalogues and advertising brochures showing the mark ‘SHUTTLE’ on different models of products (Shuttle DS81; XS35GT, etc.) such as computers, DVDs and electronic appliances. The evidence is in French, English, Spanish and German. Some of it is dated (2011), and the rest is undated.
- Several invoices relating to ‘SHUTTLE’ products, addressed to clients in Austria, Belgium, the Czech Republic, Denmark, Germany, Estonia, Spain, France, Finland, Greece, Italy, Luxembourg, Poland, Romania, Portugal, the Netherlands, Slovenia and Slovakia. The invoices were issued by the opponent and are dated between 2010 and 2015. The names of the addressees and the prices have been blacked out for confidentiality reasons. The quantities range from 1 to 124.
According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
The evidence filed shows that the place of use is Germany. This can be inferred from the language of some of the documents (German) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.
The opponent presented undated and dated brochures, and an affidavit. The undated brochures have to be considered in conjunction with the other dated evidence, such as the invoices. Most of the evidence is dated within the relevant period.
The documents filed, namely the invoices, the affidavit and the brochures, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
As regards the nature of use, the evidence shows use of the sign as a trade mark in the form in which it was registered (‘Shuttle’) for computer hardware.
The opponent submitted several invoices relating to computer hardware, addressed to clients in Germany, among other countries.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, invoices, brochures and catalogues, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.
The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of these trade marks for all the goods and services covered by the earlier trade mark, but only for some.
It should be pointed out that the term ‘in particular’, 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to only part of the goods or services for which it is registered, it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect of only that part of the goods or services.
In the present case, the evidence shows genuine use of the trade mark for computer hardware. Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
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: Computer hardware.
The contested goods are the following:
Class 9: Computer hardware; computer software; computers; computer servers; data processing equipment; communications equipment; data communications apparatus; computer network hardware; telecommunications apparatus; parts and fittings for all the aforesaid goods.
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 computer hardware is identically contained in the list of the opponent’s goods.
The contested computers are identical to the opponent’s goods, as they are synonymous.
The contested computer network hardware is included in the broad category of the opponent’s computer hardware. Therefore, they are identical.
The contested data processing equipment; communications equipment; data communications apparatus; telecommunications apparatus and the opponent’s computer hardware are identical, as they overlap.
The contested computer software and computer servers are similar to the opponent’s computer hardware. A computer is actually a ‘system’, a combination of components that work together. The hardware devices are the physical components of that system. The hardware is designed to work hand in hand with computer programs, referred to as software. Computer hardware companies also manufacture software; hardware and software have the same distribution channels and target the same professional public (e.g. for use in banking and finance, education, medicine, business or entertainment/recreation) and/or the general public. Moreover, they are complementary.
Finally, the contested parts and fittings for computer hardware, computer software, computers, computer servers, data processing equipment, communications equipment, data communications apparatus, computer network hardware, telecommunications apparatus must be considered similar to the opponent’s goods because they are complementary and are offered for sale by the same producers. They have the same distribution channels and target the same public.
- 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 and similar are directed at the public at large. The relevant public’s degree of attention towards the goods is likely to vary according to the category of goods in question, ranging from average to high depending on the nature and the price of the goods.
- The signs
Shuttle | XShuttle |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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).
In the contested sign, the word ‘SHUTTLE’ is clearly identified within the mark. This word is preceded by a simple letter ‘X’ that will be seen as such.
Therefore, both word marks contain the word ‘Shuttle’, which is an English word also used in German in the sense of ‘a plane, bus, or train which makes frequent journeys between two places’ (information extracted from Collins Dictionaries on 24/04/2017 at https://www.collinsdictionary.com/dictionary/english/shuttle and https://www.collinsdictionary.com/dictionary/german-english/shuttle). It is therefore distinctive for goods relating to technology.
Both signs are word marks. Neither of the signs contain elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually and aurally, the signs coincide in ‘Shuttle’ and differ in the first letter of the contested sign, ‘X’, and in the sound of that letter. Therefore, the signs are visually and aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘shuttle’, the signs are conceptually similar to a high degree.
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 goods in conflict are partly identical and partly similar.
The similarity between the signs arises from the fact that the entire earlier mark is encompassed in the contested sign. Although more attention is usually given to the beginning of a sign, as the applicant has argued, the position within the mark of the element that the signs have in common is generally of little importance. The protection against likelihood of confusion applies in both directions: the earlier mark is protected against the more recent mark being understood as referring to the goods covered by the earlier mark, and vice versa.
Even a high degree of attention in relation to some of the goods does not eliminate the likelihood that the consumer will think that the contested mark is in some way economically linked to the earlier mark, because the signs have the same distinctive element and refer to strictly related products, all belonging to the same specific field. In this respect, account should be taken of the fact that even consumers with 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), given that they only rarely have the chance to make a direct comparison between different marks, and often have to place their trust in the imperfect image of them that they have retained in their minds.
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 German trade mark registration No 30 209 292. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right German trade mark registration No 30 209 292 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Cristina CRESPO MOLTÓ | José Antonio GARRIDO OTALOA | Zuzanna STOJKOWICZ |
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.