YQU | Decision 2694613
Date Published: Sep 28, 2017
OPPOSITION No B 2 694 613
You Mobile Telecom Spain, S.L. Sociedad Unipersonal, C/Marcelo Usera, 101 - 3ª Planta, 28026 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain (professional representative)
a g a i n s t
Tim Ruckaberle, Stockholmer Str. 16, 71034 Böblingen, Germany (applicant), represented by 2S, IP Schramm Schneider Patentanwälte Rechtsanwälte, Cuvilliésstrasse 14ª, 81679 Munich, Germany (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 694 613 is partially upheld, namely for the following contested goods:
Class 9: 3D spectacles; Spectacles [optics]; Spectacles equipped with a built-in camera; Optical glasses; Sight glasses [optical]; Polarizing spectacles
2. European Union trade mark application No 15 070 733 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 070 733. The opposition is based on European Union trade mark registration No 14 650 601. 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 and services
The goods and services on which the opposition is based are the following:
Class 9: Television decoders; HD (High Definition) televisions; UHD (Ultra High Definition) Televisions; Plasma televisions; Digital televisions; Liquid crystal display (LCD) televisions; Internet Protocol televisions.
Class 38: Audiovisual communication services; Transmission of data by audio-visual apparatus; Transmission of information in the audiovisual field; Transmission and distribution of data or audiovisual images via a global computer network or the Internet; Cable television broadcasting; Retransmission of images via satellite; Relaying of television programmes by extra-terrestrial satellite; Television broadcasting; Satellite broadcasting; Satellite television broadcasting; Radio broadcasting; Broadcasting of programmes by satellite; Streaming of television over the Internet; Cable and satellite transmission services; Radio and television broadcasting, also via cable networks; Transmission of digital audio and video broadcasts over a global computer network; Access to content, websites and portals; Providing access to portals on the Internet; Providing access to platforms and portals on the Internet; Providing user access to portals on the Internet; Providing access to Internet portals for third parties; Telecommunication services provided via platforms and portals on the Internet and other media; Provision of access to an Internet portal featuring video-on-demand programs.
Class 41: Audio-visual display presentations; Rental of audio-visual recordings; Audio-visual display presentation services for entertainment purposes; Television programming [scheduling]; Television program syndication; Television, radio and film production; Cable television programming [scheduling]; Television and radio programming [scheduling]; Provision of entertainment information via television, broadband, wireless and on-line services; Information about entertainment and entertainment events provided via online networks and the Internet; Film distribution; Syndication of radio programmes.
Class 42: Computer and information technology consultancy services; IT services.
The contested goods and services are the following:
Class 9: 3D spectacles; Spectacles [optics]; Scuba goggles; Goggles; Spectacles equipped with a built-in camera; Goggles; Eyewear cases; Spectacle holders; Eyewear pouches; Spectacle temples; Spectacle cases; Spectacle frames; Spectacle frames; Spectacle frames made of a combination of metal and wood; Spectacle frames made of a combination of metal and plastics; Spectacle frames of wood; Spectacle frames made of plastic; Spectacle frames made of a combination of plastic and wood; Spectacle frames made of metal; Spectacle frames made of metal and of synthetic material; Spectacle frames of paper; Lenses for eyeglasses; Antireflection coated eyeglasses; Pince-nez chains; Eyeglass lanyards; Pince-nez cords; Eyeglass shields; Replacement lenses for spectacles; Eyeglass cases; Cases for camcorders; Pouches for photographic apparatus; Photograph apparatus bag; Cases for children's eye glasses; Containers for contact lenses; Lens cases; Cases for sunglasses; Spectacle cases; Lens; Glacier eyeglasses; Pince-nez chains; Correcting lenses [optics]; Corrective eyewear; Lens; Unmounted spectacle frames; Magnifying glasses; Nose pads for spectacles; Nose pads for eyewear; nose pads for sunglasses; Objectives [lenses] [optics]; Optical glasses; Optical filters; Optical lenses; Optical lenses for use with sunglasses; Shooting glasses [optical]; Sight glasses [optical]; Optical glass; Polarizing spectacles; Prisms [optics]; Spectacle hinges; Side guards for eyeglasses; temples for sunglasses; Mirrors [optics]; Diving goggles; Divers' masks; Parts for spectacles; Prescription sunglasses; Close-up lenses; Accessories and spare parts for spectacles.
Class 21: Eyeglass cleaning cloths; Spectacle cleaning devices; Eyeglass cleaning cloths; Eyeglass cleaning cloths; Glass cleaning implements; Leathers for cleaning purposes; Cleaning rags; Cloths for wiping optical lenses; Eyeglass cleaning cloths; Cleaning cloths for camera lenses; Eyeglass cleaning cloths.
Class 25: Parkas; Sleeveless jerseys; Bathing drawers; Woolen clothing; Children's wear; Leather clothing; Linen clothing; Silk clothing; Sportswear; Casual shirts; Slacks; Football jerseys; Football jerseys; Denims [clothing]; Sleeveless jackets; Sleeved jackets; Trousers; Menswear; Shirts; Skull caps; Hooded pullovers; Hooded sweatshirts; Peaked headwear; Head scarves; Short-sleeved or long-sleeved t-shirts; Overshirts; Combinations [clothing]; Outerclothing; Caps [headwear]; Polo shirts; Pullovers; Clothing for skiing; Gym suits; Singlets; Sweat shirts; Waistcoats.
Class 35: Providing of online marketplaces for buyers and sellers of optical goods and accessories therefor; Retailing in relation to optical goods and accessories therefor; Wholesaling in relation to optical goods and accessories therefor.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 Classes 9, 21 and 25
The contested 3D spectacles in Class 9 are similar to the opponent’s digital televisions, as the contested goods are indispensable for viewing television in three dimensions. Furthermore, these goods coincide in their producers, end users and distribution channels. They can be sold together. The contested Spectacles [optics]; spectacles equipped with a built-in camera; Optical glasses; Sight glasses [optical] and Polarizing spectacles include 3D spectacles. Therefore, they are similar to the opponent’s digital televisions for the same reasons as those above.
The remaining contested goods are parts and accessories for optical goods (Cl. 9 and 21), optical goods which cannot include glasses for 3D televisions (Cl. 9), as well as clothes (Cl. 25). They are dissimilar to all the opponent’s goods and services, which are televisions, communication services, various services in the audiovisual field as well as IT services. The nature and the main purpose of these goods and services are different. They do not have the same distribution channels and they are neither in competition nor complementary. Even though, TV manufacturers may make themselves some parts and accessories for 3D spectacles, this is not the general rule, and rather applies only to electronic industry giants.
Contested services in Class 35
The contested services in Class 35 are also dissimilar to the opponent’s goods and services. Firstly, they consist of retailing and wholesaling in relation to optical goods and accessories therefor. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. Wholesale services consist in the sale of goods in quantity, usually for resale. Similarity between retail or wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the optical goods and accessories therefor are not identical to the opponent’s various televisions in Class 9. These contested services have no points of contact with the rest of the opponent’s services in Classes 38, 41 and 42 either.
Secondly, the remaining contested services are services of providing online marketplaces, which facilitate sellers and buyers to sell and purchase products, respectively. They may be provided in relation to goods on which the opposition is based. This is, however, insufficient to find the contested services and the opponent’s goods similar. The contested services differ in their nature, purpose, method of use and origins from the opponent’s goods in Class 9 and services in Classes 38, 41 and 42. Furthermore, they do not satisfy the same needs and are neither in competition nor complementary. Therefore, they are dissimilar.
- 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 are mainly directed at the public at large but also at business customers with specific professional knowledge or expertise in technologies and entertainment.
The degree of attention is average.
- The signs
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 mark is a figurative mark in red and white, which features the word ‘YOU’ written in big bold characters, with a white ‘Y’ enclosed in a red round background and a stylised ‘O’ in the form of a ‘play button’ used on electronic devices. It should be noted that the representation of the letter ‘O’ in the way described does not alter the public’s perception of this element as a letter. Consumers are accustomed to encountering trade marks in which one or more letters are depicted in a fanciful way, as in the present case. Four Asian characters and the letters ‘TV’ are placed above the word ‘YOU’ in a smaller size.
The Asian characters will be perceived as figurative elements and not as words since they are not officially used in any territory of the European Union. They will be seen as fanciful characters evoking Asia and, therefore, as merely decorative elements.
The contested sign is of a figurative nature as well and consists of the word ‘YOU’ depicted in a stylised typeface. Contrary to the applicant’s opinion, the sign will not be perceived as ‘YQU’, since the second letter deviates too much from the usual characteristics of a ‘Q’ (notably the height and size of the tail). On the contrary, the letter resembles an ‘O’ and generates a meaningful word, namely ‘YOU’.
The public throughout the relevant territory will likely understand the coinciding word ‘YOU’, which is part of basic English vocabulary and refers to the person who is being addressed. This word has no descriptive meaning in relation to the goods and services and is distinctive.
The element ‘TV’ in the earlier mark will be perceived by the relevant public as an abbreviation of the word ‘television’. Bearing in mind that the relevant goods are televisions, this element is non-distinctive. Indeed, it directly describes the nature of the goods.
As seen above, the vowel ‘O’ in the earlier mark will also be seen by a significant part of the public as the play symbol which refers to the action of making a device start playing, and as such is weak for the relevant goods. However, in the context of a letter in the word ‘YOU’ it does not affect the distinctiveness of this verbal element as a whole, which will be seen as average
The word ‘YOU’ in the earlier mark is the dominant and most eye-catching element due to its size and bold typeface.
Visually, the signs coincide in the independent and distinctive word ‘YOU’, which is the dominant element of the earlier sign and the only element of the contested sign. The signs differ only, for both signs, in the stylisation of the coinciding element ‘YOU’ and, for the earlier mark, in the red colour as well as in weak and/or less dominant elements, namely the term ‘TV’, the ‘play symbol’ and the Asian characters.
Moreover, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the element ‘YOU’, which is the first word of the earlier mark and the only element of the contested sign. The pronunciation differs in the sound of the additional non-distinctive and less dominant abbreviation ‘TV’ of the earlier mark.
Therefore, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.
The coinciding term ‘YOU’ is meaningful and distinctive and will be understood by the whole public. In this respect the signs have the same meaning.
Moreover, the element ‘TV’ is considered non-distinctive and the Asian characters will not be understood but only associated with Asian languages. In addition, these two elements are less dominant.
Therefore, the signs are considered 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 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, despite the presence of weak and non-distinctive elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
Moreover, the Court has set out the essential principle that 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 the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C39/97, Canon, EU:C:1998:442, § 17).
In the present case, the goods and services are partly similar and partly dissimilar. The degree of attention is average.
The signs are aurally and conceptually highly similar and visually similar to an average degree. The similarity results from the coinciding distinctive and independent word ‘YOU’, which is the dominant element of the earlier mark and the only component of the contested sign.
The signs only differ in weak elements, in merely decorative components and in the stylisation of their coinciding term ‘YOU’.
Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only 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, § 26).
Based on all the foregoing, it is considered that the strong coincidences between the signs have a decisive impact and that the additional elements are clearly not sufficient to differentiate the marks. Taken together with the similarity of part of the goods, it is likely that the public will believe that these goods come from the same undertaking or economically linked undertakings.
Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, on the part of the public.
Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 650 601. It follows that the contested trade mark must be rejected for all the contested goods found to be similar.
The rest of the contested goods and services are dissimilar. As similarity of the 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.
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
Katarzyna ZANIECKA | Steve HAUSER | Boyana NAYDENOVA |
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.