OPPOSITION No B 2 686 809

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

Hangzhou lifesmart technology co. Ltd., Room 903, Insigma Shuangcheng Building 2 No.1785 Jianghan Rd, Changhe Street, Binjiang District, Hangzhou City, Zhejiang Province, People’s Republic of China (applicant), represented by Guy Delhaye, 2 rue Gustave de Clausade, 81800 Rabastens, France (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 686 809 is upheld for all the contested goods, namely:

Class 7: Robots; tea processing machines; mixing machines; beverage preparation machines, electromechanical; kitchen machines, electric; mills for household purposes, other than hand-operated; washing machines (laundry); door openers, electric; dishwashers.

Class 9: Sensors and detectors; switches, electric; plugs, sockets and other contacts (electric connections); camcorders; electrical switch boards; automatic access control systems; switchboards; electric sockets; infrared remote controllers.

Class 11: Lamps; cooking apparatus and installations; refrigerators; air purifying apparatus and machines; air conditioning installations; heating apparatus, electric; heating installations; water purifying apparatus and machines; radiators, electric.

2.        European Union trade mark application No 14 886 527 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 886 527, namely against some of the goods in Classes 7, 9 and 11. The opposition is based on, inter alia, 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.

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 EU trade mark registration No 4 585 295.

1. The goods

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

Class 7: Tin openers (electric); electric generators; electric hammers; electric motors (not for land vehicles); fruit presses (electric) for household purposes; electromechanical apparatus for preparing beverages; electric hand drills; glue guns, electric; electric food processors; knives (electric); blenders, electric, for household purposes; electromechanical food preparation machines; machines and apparatus for polishing (electric); fruit presses, electric; machines and apparatus for cleaning (electric) for household purposes; electric beaters; electric shears; whisks, electric for household purposes; electric shoe polishers; machines and apparatus (electric) for carpet shampooing; food processors (electric); grinders/crushers (electric) for household purposes; coffee grinders (other than hand operated); mills for household purposes (other than hand-operated); knife grinders; vacuum cleaners; bags for use in vacuum cleaners; vacuum cleaner attachments for disseminating perfumes and disinfectants; washing machines; bread cutting machines.

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 11: Electric heaters for baby bottles; electric lights for Christmas trees; pressure cookers (autoclaves), electric; electrically heated carpets; discharge tubes, electric, for lighting; sockets for electric lights; baby bottle warmers (electric); electric deep fryers; footmuffs, electrically heated; footwarmers (electric or non-electric); electric light bulbs; filaments for electric lamps; heating filaments (electric); electric heating apparatus; yoghurt-makers, electric; coffee filters, electric; electric coffee percolators; electric coffee percolators; cooking utensils (electric); sockets for electric lamps; filaments for electric lamps; electric lamps; electric discharge tubes for lighting; electric fans for personal use; radiators, electric; electric pressure cookers; electrically heated carpets; waffle irons, electric; electric laundry dryers; kettles (electric); flashlights (torches); ice machines and apparatus; bicycle lights; freezers, refrigerators; air-conditioning apparatus; refrigerating containers; microwave apparatus (cooking apparatus), warming plates; stoves; torches.

The contested goods are the following:

Class 7: Robots; tea processing machines; mixing machines; beverage preparation machines, electromechanical; kitchen machines, electric; mills for household purposes, other than hand-operated; washing machines (laundry); door openers, electric; dishwashers.

Class 9: Sensors and detectors; switches, electric; plugs, sockets and other contacts (electric connections); camcorders; electrical switch boards; automatic access control systems; switchboards; electric sockets; infrared remote controllers.

Class 11: Lamps; cooking apparatus and installations; refrigerators; air purifying apparatus and machines; air conditioning installations; heating apparatus, electric; heating installations; water purifying apparatus and machines; radiators, electric.

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 7

Despite the different wording, washing machines (laundry); mills for household purposes, other than hand-operated; beverage preparation machines, electromechanical are identically contained in both lists of goods.

The opponent’s electric beaters are a type of equipment used for mixing food; they are identical to the contested mixing machines, as they overlap.

The contested kitchen machines, electric are powered by electricity and have attachments for processing products used in the household. They are considered identical to the opponent’s electromechanical food preparation machines, as they overlap.

The contested robots can be domestic robots, which are electronic robotic devices that are designed to manage various types of tasks around the house. These goods are similar to a high degree to the opponent’s machines and apparatus for cleaning (electric) for household purposes. These contested goods do not need to be controlled by a person continuously. They are complementary and have the same nature as the opponent’s machines and apparatus for cleaning (electric) for household purposes. Moreover, they are produced and distributed by the same undertakings and offered to the same end customers.

Similar reasoning applies to the comparison of the contested door openers, electric with the opponent’s door openers, electric, although these goods are in Class 9 of the earlier mark. A door opener is typically mounted on the transom of the door and includes an electric motor. Therefore, the goods are highly similar.

The contested dishwashers are similar to the opponent’s washing machines, as these goods have the same purpose, commercial origin and distribution channels.

Tea processing machines are similar to the electromechanical food preparation machines in the same class of the earlier European Union trade mark. These opponent’s goods cover a wide range of goods, which are complementary to the contested goods in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods lies with the same undertaking.

Contested goods in Class 9

Sensors are devices that identify or measure physical properties and record, indicate or otherwise respond to them. Detectors are instruments that are used to discover if something is present somewhere, or measure how much of something there is. The contested sensors and detectors are included in the broader category of the opponent’s monitoring apparatus, electric. These goods are identical.

The contested switches, electric and the opponent’s solenoid valves (electromagnetic switches) are identical, as they overlap.

The contested automatic access control systems; switchboards; electric sockets are included in the broad category of the opponent’s monitoring apparatus. Therefore, they are identical.

The contested plugs, sockets and other contacts (electric connections); electrical switch boards and the opponent’s connection boxes (electricity) are identical, as they overlap.

The opponent’s video cameras are cameras that record video and usually audio; especially camcorder (https://www.merriam-webster.com/dictionary/video%20camera). Therefore, the contested camcorders are included in the broad category of the opponent’s video cameras. Therefore, they are identical.

The contested infrared remote controllers and the opponent’s electrodynamic signal remote control apparatus are identical, as they overlap.

Contested goods in Class 11

Refrigerators; heating apparatus, electric; radiators, electric are identically contained in both lists of goods.

The contested lamps include, as a broader category, the opponent’s electric lamps. 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 cooking apparatus and installations overlap with the opponent’s cooking utensils (electric); consequently, they are identical.

The contested heating installations and the opponent’s air-conditioning apparatus are identical, as they overlap.

The contested air conditioning installations and the opponent’s air-conditioning apparatus are similar to a high degree. These goods have the same purpose and producers and target the same public. These goods may also be in competition with each other, as the public might choose one instead of the other.

The contested air purifying apparatus and machines and water purifying apparatus and machines have some similarities to the opponent’s air-conditioning apparatus. These goods are all equipment usually installed in houses, offices and other buildings and are intended to create pleasant and healthy conditions for those living in or using such places by controlling and monitoring air purity. These goods may originate from the same manufacturers, have the same channels of distribution and target the same end users. Therefore, they are similar.

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 goods are directed at the public at large and also at professionals. The relevant public’s degree of attention towards the goods is likely to vary according to the category of goods question, ranging from average to high depending on the nature and the price of the goods.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is the word mark ‘LIFE’, which will be perceived to ‘refer to things or groups of things which are alive’ (information extracted from Collins Dictionary on 16/05/2017 at https://www.collinsdictionary.com/dictionary/english/life). This word has no meaning in relation to the goods in question; therefore, the distinctiveness of this word is normal.

The contested sign is a figurative mark consisting of the verbal element ‘LifeSmart’ in rather standard characters. The relevant public will dissect the sign and understand the word ‘Life’ as conveying the abovementioned concept. The second part of the sign, ‘Smart’, will be associated with the concept of ‘using digital communication technology to provide many of the functions of a computer, esp internet access and social networking apps’ (information extracted from Collins Dictionary on 16/05/2017 at https://www.collinsdictionary.com/dictionary/english/smart).

It is important to note that the word ‘Smart’, included in the contested sign, is generally devoid of any distinctive character in the field of computer technology, in particular in relation to hardware and software (see by analogy 05/02/2015, T-499/13, SMARTER SCHEDULING, EU:T:2015:74 § 32-33).

Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader

Visually and aurally, the signs coincide in ‘LIFE’, which constitutes the entire earlier mark. They differ in the stylisation and the letters ‘Smart’, present in only the contested sign and found to be non-distinctive.

Therefore, the signs are similar to an average degree.

Conceptually, the signs are highly similar. The conflicting signs are conceptually similar insofar as they both contain the element ‘LIFE’. They differ in the concept ‘Smart’, which is non-distinctive.

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 territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods in conflict are similar to varying degrees or identical.

The signs are visually, aurally and conceptually similar. The word ‘LIFE’ of the earlier sign is entirely contained within the contested sign. In addition, this element is placed at the beginning, where consumers usually pay more attention, and is the most distinctive element of the contested mark.

Consequently, the identical string of letters at the beginning of the marks at issue has to be taken into account when assessing the likelihood of confusion between the marks.

The difference between the earlier mark and the contested sign, namely the second part of the contested sign, ‘Smart’, which is non-distinctive for the goods in conflict, is not sufficient to counteract the significant similarity between them; therefore, there is a serious likelihood that the relevant public will confuse them and believe that they come from the same undertaking or from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-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 EU trade mark registration No 4 585 295. It follows that the contested trade mark must be rejected for all the contested goods.

The applicant argues that its mark has reputation and filed various pieces of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

As the earlier right EU trade mark registration No 4 585 295 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 (IR No 1 123 012 designating the EU) (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

Erkki MÜNTER

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.