On 19 December 2018, the Fourth Board of Appeal (the "Board") of the European Union Intellectual Property Office (the "EIUPO") found in favour of Beats Electronics and annulled a decision of the EUIPO's Opposition Division of 29 March 2018.
The dispute arose after Disashop S.L. had sought to register a figurative trade mark on 26 March 2015 as a European Union trade mark for goods and services of Nice classes 9, 35 and 38, mostly consisting of apparatus for recording, transmission or reproduction of sound, telecommunication services and rental of telecommunication apparatus. The trade mark displays as follows:
On 29 October 2015, Beats Electronics LLC ("Beats Electronics") filed an opposition against all the goods and services applied for on the basis of five earlier trade marks, including the following figurative trade marks, registered for similar kinds of goods and services:
In its decision of 29 March 2018, the EUIPO's Opposition Division rejected the opposition of Beats Electronics in its entirety concluding that, visually, the signs differed in their overall layout, proportions, shapes and colours. It added that, aurally, the contested signs would be pronounced as the letters "d" and "b" respectively so that they were not similar. Finally, the decision noted that the signs were not similar from a conceptual point of view and that the signs taken as a whole created sufficiently different impressions. On this basis, the Opposition Division concluded that there was no likelihood of confusion between these signs and rejected the opposition. On 29 May 2018, Beats Electronics appealed this decision.
In its decision of 19 December 2018, the Board annulled the Opposition Division's decision. It found that there was a likelihood of confusion between the signs under Article 8(1)(b) of Regulation 2017/1001 of 14 June 2017 on the European Union trade mark (the "Regulation").
In its analysis, the Board first identified the relevant public from the perspective of which to assess the likelihood of confusion as both the general public (for items of little monetary value that did not require technical knowledge) and business customers (for items of greater value aiming to meet a particular technological need). Subsequently, the Board compared the signs at issue, focusing on potential visual, aural and conceptual similarities. The Board also clarified that the global appreciation of similarity had to be carried out on the basis of the overall impression created by both signs.
In that respect, the Board found that the overall impression left by the signs was that they mirrored each other. The signs have identical structure and composition as well as a highly similar graphic representation and stylisation. The differences between the signs (i.e., mainly that the vertical line is, in one case, placed on the left-hand side and flows into the outer circle and is, in the other case, placed on the right-hand side and does not flow into the outer circle) were, in the Board's opinion, minor and insufficient to counterbalance the high visual similarity between the two signs. The Board added that an assessment of the aural perception of the signs was not possible as these were purely figurative signs not subject to a phonetic assessment. Conceptually, the Board found that neither of those signs had any specific meaning and that, therefore, the conceptual comparison remained neutral.
Finally, the Board assessed, on the basis of the above elements, whether there was a likelihood of confusion between the signs. In that respect, it highlighted that: (i) the visual similarity of the signs was established; (ii) that there was no phonetic comparison possible and that the signs did not have any conceptual meaning that could have helped distinguishing them and (iii) that the goods and services covered by both trade marks were identical or similar at least to some degree.
The Board also took into consideration the notion of imperfect recollection, i.e., the fact that the average consumer usually places his/her trust in the imperfect picture of the trade marks that he/she has kept in his/her mind for the purposes of comparing these trade marks. On this basis, it concluded that, even taking into account an enhanced degree of attention, there was for the goods and services at issue a likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of the Regulation.
Consequently, the Board declared the appeal successful and annulled the Opposition Division's decision for the part that had been appealed.
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