OPPOSITION No B 2 717 000

Medion AG, Am Zehnthof 77, 45307 Essen, Germany (opponent), represented by Becker & Müller, Turmstr. 22, 40878 Ratingen, Germany (professional representative)

a g a i n s t

New Age Italia S.R.L., Via De Brozzi, 3, 48022 Lugo (RA), Italy (applicant), represented by Agazzani & Associati S.R.L., Via dell'Angelo Custode, 11/6, 40141 Bologna, Italy (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 717 000 is upheld for all the contested goods.

2.        European Union trade mark application No 15 206 428 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 15 206 428. The opposition is based on European Union trade mark registration No 4 585 295. 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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 9: Magnetic encoders; magnetic data carriers; optical data media; data-processing apparatus; optical character readers; writing and/or reading implements (data processing); magnetic data carriers; mouse (data processing equipment); optical data carriers; disc exchangers (for computers); scanners [data processing equipment]; memories for data processing installations, processors (central processing units); compact discs (read-only memory); compact discs (audio-video); computers; recorded computer programs; computer software [recorded]; games programs for computers; computer operating programs (recorded); computer peripheral devices; computer programs (downloadable); computer keyboards; printers for use with computers; wrist rests for use with computers; interfaces [for computers]; laptops (computers); floppy disc drives; monitors for computers; monitors (computer hardware), navigation apparatus (computer programs) for vehicles (onboard computers); notebooks (computers); computer peripheral devices; computer programs; computer software (recorded); computer game programs; keyboards for computers; make-up removing appliances, electric; grids for electric accumulators, chargers for electric accumulators, plates for electric accumulators, electric accumulators; alarm bells, electric; connection boxes (electricity), display apparatus (electric); electronic display panels; batteries, electric; flat irons, electric; theft prevention installations, electric; electric wires; electrodynamic apparatus for the remote control of railway points; electric cables; electric capacitors; electromagnetic coils; electronic publications [downloadable]; electronic pens [visual display units]; discharge tubes, electric, other than for lighting; anti-interference devices (electricity); batteries, electric, for vehicles; electrodynamic signal remote control apparatus; photocopiers (photographic, electrostatic, thermic); inductance coils (electricity); electric devices for attracting and killing insects; wire connectors (electricity); door bells (electric); chargers for electric batteries; hair-curlers, electrically heated; welding apparatus, electric; soldering irons, electric; solenoid valves (electromagnetic switches); measuring devices, electric; electrically heated hair curlers; locks (electric); transmitters of electronic signals; electronic security tags for goods; socks, electrically heated; electronic pens (visual display units); buzzers electric; electronic pocket translators; electronic organisers; electric door bells; door openers, electric; door closers, electric; monitoring apparatus, electric; compact discs (audio-video); receivers (audio and video); tone arms for record players; head cleaning tapes [recording]; tone arms for record players; sound recording apparatus; tape-recorders; sound locating instruments; sound carriers; sound transmitting apparatus; sound amplifiers; sound-reproducing apparatus; amusement apparatus adapted for use with television receivers; temperature indicators; video telephones; loudspeaker boxes; letter scales; compact disc players; television apparatus; telephone apparatus; motion picture cameras; film cutting apparatus; radiotelephony sets; signalling bells; altimeters; cassette players; compasses; headphones; laser pointers (luminous pointers); microphones; mobile telephones; modems; navigational instruments; lenses (optics); mouse pads (mouse mats); plotters; projection apparatus; projection screens; slide projectors, radios; smartcards (cards with integrated circuits); video games adapted for use with television receivers only; walkie talkies; video cameras; video recorders; safety helmets for sports; none of the aforesaid goods being or featuring educational and/or entertainment content intended for general circulation; the aforementioned goods exclusive of board game programs for computers, computer board games and video board games for use with television receivers only, electronic board games, video board games for a connection to a television, board games software, cards/discs/tapes/wires/circuits for bearing or bearing board games and/or games software and/or arcade board games, board gaming machines including slot machines.

Class 10: Electric acupuncture apparatus; electrodes for medical use; electrocardiographs; belts, electric, for medical purposes; heating cushions, electric, for medical purposes; thermoelectric compresses (surgery), thermal compresses (electric) for surgical purposes; electrical dental apparatus; aerosol dispensers for medical purposes; sphygmomanometers; hot air apparatus (therapeutic); lamps for medical purposes; massage apparatus.

Class 28: Stationary exercise bicycles; body-building apparatus; discuses for sports; kites; skating boots with skates attached; remote controlled vehicles; model vehicles (miniature); badminton sets; paragliders; appliances for gymnastics; dumb-bells; inline skates; machines for physical exercises; skateboards; tables for indoor football.

The contested goods are the following:

Class 9: Software programs; Computers; Printers; Videos; Terminals for management and checking (supervision) of exercise equipment and machines and machines for therapeutic and medical purposes, for management and checking (supervision) of exercises carried out using the aforesaid machines and equipment, and for checking (supervision), management and design of exercise programmes.

Class 10: Medical machines and equipment for exercise, rehabilitation and for medical, muscular, aerobic and cardiovascular checks performed by means of physical exercises carried out using these machines and equipment; Machines and equipment for muscle rehabilitation; Apparatus and instruments for therapeutic treatments; Physical exercise apparatus for therapeutic use.

Class 28: Gymnastic and sporting articles not included in other classes; Exercise, gymnastic, sports, training and aerobic and cardiovascular exercise machines and equipment.

Contested goods in Class 9 

The contested computers; videos are identically contained in both lists of goods (including synonyms).

The contested printers include, as a broader category, the opponent’s printers for use with computers in Class 9. 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 software programs include, as a broader category, the opponent’s computer software [recorded] in Class 9. 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 terminals for management and checking (supervision) of exercise equipment and machines and machines for therapeutic and medical purposes, for management and checking (supervision) of exercises carried out using the aforesaid machines and equipment, and for checking (supervision), management and design of exercise programmes are included in the broad category of the opponent’s data processing apparatus in Class 9. Therefore, they are identical.

Even though the list of the opponent’s goods in Class 9 contains the sentence: none of the aforesaid goods being or featuring educational and/or entertainment content intended for general circulation; the aforementioned goods exclusive of board game programs for computers, computer board games and video board games for use with television receivers only, electronic board games, video board games for a connection to a television, board games software, cards/discs/tapes/wires/circuits for bearing or bearing board games and/or games software and/or arcade board games, board gaming machines including slot machines, this would not change the above outcome, as the Opposition Division still finds that the aforementioned contested goods are identical to those of the opponent, given that they can be at least overlapping.

Contested goods in Class 10 

The contested goods medical machines and equipment for exercise, rehabilitation and for medical, muscular, aerobic and cardiovascular checks performed by means of physical exercises carried out using these machines and equipment; machines and equipment for muscle rehabilitation; apparatus and instruments for therapeutic treatments; physical exercise apparatus for therapeutic use either include, as the broad categories (e.g. machines and equipment for muscle rehabilitation), or overlap with (e.g. physical exercise apparatus for therapeutic use), the opponent’s massage apparatus in Class 10. These goods are identical.

Contested goods in Class 28 

The contested gymnastic articles not included in other classes; gymnastic machines and equipment include, as broader categories, the opponent’s appliances for gymnastics in Class 28. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested sporting articles not included in other classes; exercise, sports, training and aerobic and cardiovascular exercise machines and equipment include, as broader categories, the opponent’s stationary exercise bicycles in Class 28. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

2. 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 relevant goods found to be identical are partly directed at the public at large and partly at business customers with specific professional knowledge or expertise, for example in the medical (physiotherapy) and sport fields. The degree of attention may vary from average to above average, depending on the price, (specialised) nature and the technical conditions of the purchased goods. For example the goods in Class 10 could have severe consequences for persons during their rehabilitation after a surgery, as well as some of the goods, such as computers, printers in Class 9 are infrequent purchases and their price could also be quite high. The level of attention for this kind of goods is rather above average.

3. The signs

LIFE
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-, Slovak- and Slovenian-speaking part of the relevant public for which the word ‘LIFE’ is not understood and is therefore distinctive for the relevant goods; in Hungarian the equivalent of this word is ‘élet’, in Slovak ’život‘ and in Slovenian ’življenje'.

Regarding the contested sign, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Even though in this case the element ‘BIO’ is not visually separated from the remaining letters, consumers naturally look for a meaning when reading a word. Indeed, the element ‘BIO’ is a common prefix that is also used in Hungarian, Slovak and Slovenian as meaning: ‘indicating or involving life or living organisms; biological’ (see Collins English Dictionary online). Therefore, this element in the contested sign has less impact than the more distinctive elements ‘LIFE’ and the figurative element, as it could refer to the fact that the relevant goods are being made of environmentally friendly products respecting the environment, goods that enable some biological functions or have some biological feature in terms of movement.

The earlier mark and the contested sign have no element that could be considered more dominant (visually eye-catching).

Visually, the signs coincide in the element ‘LIFE’, the only difference being the slightly fancy typeface in which these letters are written in the contested sign. The whole earlier mark is entirely contained in the contested sign. On the other hand, they differ in the element ‘BIO-’ of the contested sign, which is considered a weak element, and the figurative element of the contested sign on the left side of the verbal element consisting of some curved vertical lines.

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). This is also applicable in the case at hand with respect to the device in the contested sign.

Regarding the slightly fancy typeface in which the verbal element of the contested sign is written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the element it seems to embellish.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories mentioned above, the pronunciation of the signs coincides in the sound of the element/word /LIFE/, present identically in both signs. The marks differ in the sound of the element /BIO/ of the contested sign, a weak element, which has no counterpart in the earlier mark. The marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark has no meaning for the relevant public defined above, while the element ‘BIO’ of the contested sign is perceived as having the above mentioned meaning. Furthermore, the figurative element in the contested sign does not refer to any concept in particular. Even though the element ‘BIO’ is considered weak, since one of the signs will not be associated with any meaning, the signs are not conceptually similar. Furthermore, the impact of this conceptual difference is, however, limited, as ‘BIO’ is weak.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

4. 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 territories specified above. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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.

The goods at issue have been found to be identical and the level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually similar to an average degree, aurally to a high degree and the marks are not conceptually similar. However, the latter is based on a weak element, so it has a limited impact.

In addition, account should also 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 his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case, although the public in the relevant territories might detect certain visual, aural and conceptual differences between the signs, the likelihood that the public might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign 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, conceivable that the relevant public, even with a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

Considering all the above, there is a likelihood of confusion (including a likelihood of association) on the part of the Hungarian-, Slovak- and Slovenian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 585 295. It follows that the contested trade mark must be rejected for all the contested goods.

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

Martin MITURA

Chantal VAN RIEL

Saida CRABBE

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.