LIFE EMOTIONS | Decision 2402520 – MEDION AG v. Life Emotions

OPPOSITION No B 2 402 520

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

Life Emotions, Avenida do Brasil nº147 B, 1700-067 Lisboa, Portugal (applicant).

On 03/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 402 520 is upheld for all the contested goods and services, namely:

Class 9: Remote control apparatus; Remote control apparatus; Electrical remote control apparatus; Telecommunications networks; Programmable telecommunication apparatus; Computer programmes for use in telecommunications; Computer software for inter-network accounting in the telecommunications field; Touch sensitive panels; Remote monitoring apparatus; Monitoring instruments; Monitoring apparatus, electric;; Video cameras adapted for monitoring purposes; Data storage devices; Storage apparatus for computer data; Downloadable music files; Downloadable music files; Electrical cables; access server hardware; Communications servers (computer hardware]; Network access server hardware; Electrical remote control apparatus; Video players; Readers [data processing equipment]; Software programmable microprocessors; 3D spectacles; Liquid crystal display screens; Electronic display boards; Multifunction keyboards; Peripherals adapted for use with computers; Peripherals adapted for use with computers; Peripherals adapted for use with computers; Podcasts; Central processing units; Games software; Interactive video game programs; Software programs for video games; Games software; Games software; Recorded computer game programs; Games software; Games software; Games software; Video game programs; Games software; Computer software for use in migrating between different computer network operating systems; Projectors; Projectors; Projectors; Electronic publications, downloadable; Audiovisual receivers; Video receivers; Television apparatus; Satellite receiving apparatus; Audiovisual receivers; Computer programs for accessing and using the internet; Anti-theft warning apparatus; Internet servers; Speakers ; VPN [virtual private network] hardware; VPN [virtual private network] operating software; Recorded content; Safety, security, protection and signalling devices; Information technology and audiovisual equipment; Optical devices.

Class 38: Provision of internet access services; Internet access services; Computer communication and Internet access; Provision of access to the internet for others; Provision of internet access services; Provision of internet access services; Internet service provider services; Internet service provider services; Telecommunication services; Provision and rental of telecommunications facilities and equipment; Data communication by electronic means; Communication of data by means of telecommunications; Communications by television for meeting; Electronic communications consultancy; Communication network consultancy; Professional consultancy relating to telecommunications; Delivery of messages by audiovisual media; Delivery of messages by electronic media; Delivery of digital audio and/or video by telecommunications; Transmission and reception [transmission] of database information via the telecommunication network; Providing access to electronic communications networks and electronic databases; Providing access to telecommunication networks; Providing of access to telecommunication warehousing services; Provision of information relating to media communications; Providing facilities and equipment for video conferencing; Providing electronic telecommunication connections; Information relating to communications; Information about telecommunication; Operation of a telecommunications network; Operation of telecommunications systems; Electronic network communications; Advisory services relating to communications; Consultancy services relating to data communications; Advisory services relating to communications equipment; Telecommunications access services; Audiovisual communication services; Data communication services accessible by access code; Data communication services accessible by password; Communication services for the transmission of information; Communication services by cable; Communication services by satellite; Communication services provided electronically; Electronic communications services; Digital communications services; Wireless communications services; Audio communications services; Network conferencing services; Information, consultancy and advisory services relating to telecommunications; Telecommunications routing and junction services; Information and advisory services relating to telecommunication services; On-line information services relating to telecommunications; Information services relating to telecommunications; Teleconferencing and video conferencing services; Data transmission services over telecommunications networks; Voice and data transmission services; Video transmission services; Digital transmission services; Electronic and telecommunication transmission services; Secure transmission of data, sound or images; Video communication services; Provision of video conferencing services; Communications by fiber [fibre] optic networks; Communications by fiber [fibre] optic networks; Communications by fiber [fibre] optic networks; Communications by fiber [fibre] optic networks; Communications by fiber [fibre) optic networks; Telecommunications services provided by means of optical fibre networks; Telecommunications services, namely providing fiber optic network services.

Class 42: Configuration of computer systems and networks; Integration of computer systems and networks; Maintenance of software for Internet access; IT services.

2. European Union trade mark application No 12 899 894 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 899 894 namely against some of the goods and services in Classes 9, 38, 42. The opposition is based on, inter alia, international trade mark registration No 718 093 designating, inter alia, Austria. 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 international trade mark registration No 718 093 designating, inter alia, Austria.

The goods and services

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

Class 9: Communication apparatus and entertainment apparatus and parts thereof, included in this class, especially radios, car radios, record players, cassette recorders, headphones, video cameras and recorders, record players for digital compact disks, magnetic tape recorders, apparatus for the recording, transmitting, amplifying and reproduction of sound and images, loudspeakers, television sets, video games (for connection to a television), video cassettes (prerecorded and blank), phonograph records, audio cassettes (prerecorded and blank), antennas, radio recorders, projectors, faders, microphones, apparatus for editing images, dictating machines, walkie-talkies, monitoring apparatus and monitoring devices and operational systems made thereof; electric and electronic calculators, inclusive of pocket calculators; electronic data processing machines, computers, computer peripheral equipment and parts thereof, included in this class, inclusive of computers for games, computers for home use, notebooks, monitors, active speakers, data input-output apparatus (inclusive of keyboard, joystick, gamepad and mouse), scanners, printers, printer interface converters, terminals, interface cards, diskettes, CD-ROM, fixed disks, drives of all kinds (external and internal), storage modules, storage systems (external and internal), essentially consisting of storage media, inclusive of optical, digital or magnetic storage media and PC-plug-in cards as well as appropriate writing and reading units, CD burners, main boards, plug-in components, modems, ISDN cards, sound cards, graphic cards, digital cameras, programs stored on data media; game software; photocopying apparatus, tripods, flashlight apparatus and flashlamps, photographic exposure meters, film cameras, film projection apparatus, diapositives, slide frames; electric and electronic apparatus and instruments as well as parts thereof for the use in telecommunication and communication engineering, included in this class, including ISDN installations, telephone sets, digital telephone sets, wireless telephone sets, mobile telephones, display-radio-receivers, telephone earpieces, telephone answering machines, telecopiers (telefax), intercommunication apparatus, hands-free sets, all the aforementioned goods inclusive of appropriate peripheral equipment, included in this class; transmitting and receiving stations for communication engineering and data communication, inclusive of antennas, parabolic antennas, receivers, decoders, modems, converters, microwave converters, amplifiers, wave guides, antenna connecting sockets, wide-band communication systems; alarm devices and systems, included in this class; glasses (optic), spectacle cases; electrical household utensils, included in this class, especially sheet welding and soldering equipment, scales and kitchen scales, curling tongs, electric irons; thermometers, weather stations; bicycle computers; cables, cable clamps, multiple connectors, male plugs, batteries, accumulators and power supplies, battery chargers, electric power supplies for all the aforementioned goods included in this class.

Class 38: Processing and forwarding of electronically transmitted data, operation of networks for the transfer of data, images and voice, offline and online multimedia services, transport-specific fixed and mobile radio services as well as telematic services; value-added services in using networks, essentially data bank services, namely collecting, processing, activating, storing and requesting of data information as well as information services, order services and voice services against payment, namely telephony, voice storing services, forwarding for short messages, inquiries, conference calls; operation of a callcenter, rental of the goods named in class 9 and their accessories.

Class 42: Design, development and maintenance of programs for operating of networks of class 38 and goods of class 9; technical consulting in projecting of apparatus, installations and units for network services; technical consulting in projecting, inclusive of planing and developing of networks of class 38; rental of the goods named in class 9 and their accessories.

After several limitations, the contested goods and services are the following:

Class 42: Configuration of computer systems and networks; Integration of computer systems and networks; Maintenance of software for Internet access; IT services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms, ‘in particular’, ‘for example’, ‘including’, used in the lists of goods and services, indicates that the specific goods and services 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the lists of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 9

The contested Remote monitoring apparatus; Monitoring instruments; Monitoring apparatus, electric; Video cameras adapted for monitoring purposes; Remote control apparatus; Electrical remote control apparatus; Electrical remote control apparatus; Anti-theft warning apparatus, being apparatus for monitoring and remote control monitoring, are included in the broad categories of, or overlap with, the opponent’s monitoring apparatus and monitoring devices and operational systems made thereof. Therefore, they are identical.

The contested Safety, security, protection and signalling devices include, as broader categories, or overlap with, the opponent’s monitoring apparatus and monitoring devices and alarm devices and systems, included in this class that are and can be used for the abovementioned purposes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Games software is identically contained in both lists of goods.

The contested Interactive video game programs; Software programs for video games; Recorded computer game programs; Video game programs are included in the broad category of the opponent’s Games software. Therefore, they are identical.

The contested Computer programmes for use in telecommunications; Computer software for inter-network accounting in the telecommunications field; Computer software for use in migrating between different computer network operating systems; Computer programs for accessing and using the internet; VPN [virtual private network] operating software are various types of software. They have similar nature, methods of use and manufacturers than the opponent’s programs stored on data media; game software. The goods can coincide in distribution channels and consumers. The goods are similar.

The contested Data storage devices; Storage apparatus for computer data are identical to the opponent’s drives of all kinds (external and internal), storage modules, storage systems (external and internal), essentially consisting of storage media, inclusive of optical, digital or magnetic storage media, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested Downloadable music files (listed twice) Electronic publications, downloadable; Podcasts; Recorded content are recorded data, data programs. They have similar nature compared to the opponent’s programs stored on data media. They coincide in methods of use, manufacturers, distribution channels and consumers. The goods are similar.

The contested Access server hardware; Communications servers (computer hardware]; Network access server hardware; Readers [data processing equipment]; Software programmable microprocessors; Central processing units; Internet servers; VPN [virtual private network] hardware; Information technology and audiovisual equipmentare included in the broad category of the opponent’s electronic data processing machines, computers. Therefore, they are identical.

The contested Video players; Projectors; Speakers ; Video receivers; Television apparatus; Satellite receiving apparatus; Audiovisual receivers; Audiovisual receivers are included in the broad category of, or overlap with, the opponent’s apparatus for the recording, transmitting, amplifying and reproduction of sound and images. Therefore, they are identical.

The contested 3D spectacles have similar methods of use compared to the opponent’s glasses (optic). They may coincide in purpose, manufacturers and consumers. The goods are similar.

The contested Touch sensitive panels; Liquid crystal display screens; Electronic display boards; Multifunction keyboards; Peripherals adapted for use with computers; Peripherals adapted for use with computers; Peripherals adapted for use with computers are included in the broad categories of, or overlap with the opponent’s computer peripheral equipment and parts thereof, included in this class. Therefore, they are identical.

The contested Electrical cables are included in the broad category of the opponent’s cables. Therefore, they are identical.

The contested Optical devices include, as a broader category the opponent’s glasses (optic). 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 Programmable telecommunication apparatus are included in the broad category of, or overlap with, the opponent’s Communication apparatus. Therefore, they are identical.

The contested Telecommunications networks includes, as a broader category the opponent’s transmitting and receiving stations for communication engineering and data communication, inclusive of antennas, parabolic antennas, receivers, decoders, modems, converters, microwave converters, amplifiers, wave guides, antenna connecting sockets, wide-band communication systems. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 38

The contested Telecommunication services includes, as a broader category the opponent’s forwarding of electronically transmitted data. Since the Opposition Division cannot dissect ex officio the broad category of the contested service, they are considered identical to the opponent’s services.

The contested Electronic communications consultancy; Communication network consultancy; Professional consultancy relating to telecommunications; Consultancy services relating to data communications; Advisory services relating to communications equipment; Advisory services relating to communications; Information, consultancy and advisory services relating to telecommunications; Information and advisory services relating to telecommunication services; On-line information services relating to telecommunications; Information services relating to telecommunications; Provision of information relating to media communications; Information relating to communications; Information about telecommunication are included in the broad category of, or overlap with, the opponent’s value-added services in using networks, essentially data bank services, namely information services. Therefore, they are identical.

The contested Data communication by electronic means; Communication of data by means of telecommunications; Communications by television for meeting; Delivery of messages by audiovisual media; Delivery of messages by electronic media; Delivery of digital audio and/or video by telecommunications; Transmission and reception [transmission] of database information via the telecommunication network; Electronic network communications; Audiovisual communication services; Data communication services accessible by access code; Data communication services accessible by password; Communication services for the transmission of information; Communication services by cable; Communication services by satellite; Communication services provided electronically; Electronic communications services; Digital communications services; Wireless communications services; Audio communications services; Network conferencing services; Telecommunications routing and junction services; Teleconferencing and video conferencing services; Data transmission services over telecommunications networks; Voice and data transmission services; Video transmission services; Digital transmission services; Electronic and telecommunication transmission services; Secure transmission of data, sound or images; Video communication services; Provision of video conferencing services; Communications by fiber [fibre] optic networks; Communications by fiber [fibre] optic networks; Communications by fiber [fibre] optic networks; Communications by fiber [fibre] optic networks; Communications by fiber [fibre) optic networks; Telecommunications services provided by means of optical fibre networks; Telecommunications services, namely providing fiber optic network services; Provision and rental of telecommunications facilities and equipment; Providing facilities and equipment for video conferencing; Providing electronic telecommunication connections; Operation of a telecommunications network; Operation of telecommunications systems are various types of telecommunications services for forwarding data via different means. These services are highly similar to the opponent’s Processing and forwarding of electronically transmitted data. The services have the same nature and purpose, they coincide in the methods of use and can have same origins.

The contested Provision of internet access services; Internet access services; Computer communication and Internet access; Provision of access to the internet for others; Provision of internet access services; Provision of internet access services; Internet service provider services; Internet service provider services; Providing access to electronic communications networks and electronic databases; Providing access to telecommunication networks; Providing of access to telecommunication warehousing services; Telecommunications access services are a group of telecommunications services providing access to telecom networks and internet. These services are highly similar to the opponent’s operation of networks for the transfer of data, images and voice. They coincide in nature, purpose and methods of use, can have same origins and consumers.

Contested services in Class 42

The contested IT services include, as a broader category the opponent’s Design, development and maintenance of programs for operating of networks of class 38 and goods of class 9. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested Configuration of computer systems and networks; Integration of computer systems and networks are identical to the opponent’s Design, development and maintenance of programs for operating of networks of class 38 and goods of class 9, because the opponent’s services include, are included in, or overlap with, the contested services.

The contested Maintenance of software for Internet access are identical to the opponent’s maintenance of programs for operating of networks of class 38, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

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 and services found to be identical or similar to different degrees are directed at the public at large and at customers with specific professional knowledge or expertise. The degree of attention ranges from average to high, depending n the specific technical nature of the goods and services.

The signs

LIFE

LIFE EMOTIONS

Earlier trade mark

Contested sign

The relevant territory is Austria.

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 marks are word marks. The word LIFE is a basic English word and is understood by the relevant public referring to something alive. The word EMOTIONS is perceived by the relevant public, since the word EMOTION is present in German language, in a similar way as in English, referring to feelings (Collins English-German Dictionary).The contested mark as a whole can be perceived as ‘feelings about life’. As the words in the marks are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.

Furthermore, the consumers generally tend to focus on the first element of a sign when confronted with a trade mark, in the present case- LIFE. 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 the element LIFE. This is the only element of the earlier mark and the first word element of the contested mark. The marks differ in the second element EMOTIONS of the contested mark, which is not present in the earlier mark.

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

Conceptually, the signs are similar to an average degree in respect of the concept referring to LIFE.

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.

Global assessment, other arguments and conclusion

The goods and services have been found to be identical and similar to various degrees. The similarities and dissimilarities of the marks have been established.

The signs have been found to be similar to the extent that they have in common the word element LIFE. The only word element of the earlier mark is entirely encompassed in the beginning of the contested mark. The differentiating element -EMOTIONS is placed in a non-prominent, secondary position in the end of the contested sign and does not catch the consumer’s initial attention.

Moreover, the two signs, in view of the coinciding element, could be perceived as two different product lines coming from the same undertaking or economically-linked undertakings.

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). Even consumers who pay 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).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same as is the case here.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element LIFE. In support of its argument the applicant refers to few trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element LIFE. Under these circumstances, the applicant’s claims must be set aside.

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 international trade mark registration No 718 093 designating, inter alia, Austria. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right IR No 718 093 designating Austria leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights or other territories designated under the IR No 718 093 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

Francesca DINU

Erkki MÜNTER

Francesca CANGERI SERRANO

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.

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