OPPOSITION DIVISION
OPPOSITION No B 2 684 317
Intenso GmbH, Gutenbergstraße 2, 49377 Vechta, Germany (opponent),
represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Am
Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative)
a g a i n s t
LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic
of Korea (applicant), represented by Cohausz & Florack Patent- Und
Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf,
Germany (professional representative).
On 12/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 684 317 is upheld for all the contested goods.
2. European Union trade mark application No 14 510 606 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 14 510 606 ‘Memories’. The opposition is based on, inter alia,
international trade mark registration No 1 170 412 designating the European Union
for the word mark ‘MEMORY PLACE’. The opponent invoked Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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.
Decision on Opposition No B 2 684 317 page: 2 of 6
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 1 170 412 designating the
European Union for the word mark ‘MEMORY PLACE’.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Apparatus and instruments for conducting, switching, transforming,
accumulating, regulating or controlling electricity; apparatus for recording,
transmission or reproduction of sound or images; magnetic data carriers, recording
discs; compact discs, DVDs and other digital recording media; calculating machines,
data processing equipment, computers; computer software.
The contested goods are the following:
Class 9: Computer application software; Computer software for mobile phones;
Computer application software for mobile phones; Downloadable computer
programs; Operating system programs; Application software for Smartphones and
tablet computers; Computer software; Portable communications apparatus namely
handsets, walkie-talkies, satellite telephones ; Audio components; Apparatus for the
recording/transmission or reproduction of sound and images; Television receivers;
Mobile phone cases; Portable speakers; Portable chargers for mobile phones; Ear
phones; Wireless headphones; Wireless headsets.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
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.
Apparatus for the recording/transmission or reproduction of sound and/or images;
computer software are identically contained in both lists of goods (including
synonyms).
The contested computer application software; computer software for mobile phones;
computer application software for mobile phones; downloadable computer programs;
operating system programs; application software for smartphones and tablet
computers are included in the broad category of the opponent’s computer software.
Therefore, they are identical.
The contested portable communications apparatus namely handsets, walkie-talkies,
satellite telephones; audio components; television receivers; portable speakers; ear
phones; wireless headphones; wireless headsets are included in, or overlap with, the
broad category of the opponent’s apparatus for transmission or reproduction of
sound or images. Therefore, they are identical.
Decision on Opposition No B 2 684 317 page: 3 of 6
The contested mobile phone cases; portable chargers for mobile phones are similar
to the opponent’s data processing equipment, as the latter include mobile phones.
These goods are often produced by the same undertakings, they share the same
distribution channels and target the same relevant public. Moreover, they are
complementary.
b) 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 identical or similar are directed at the
public at large. The degree of attention may vary from average to high, depending on
the specialised nature of the goods, the frequency of purchase and their price.
c) The signs
MEMORY PLACE Memories
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.
As all elements of the marks are meaningful in English, the Opposition Division finds
it appropriate to focus the comparison of the signs on the English-speaking part of
the public.
Both marks are word marks. In the case of word marks, it is the word as such that is
protected and not its written form. Therefore, it is irrelevant whether they are
presented in upper or lower case letters, or in a combination thereof.
The contested sign ‘Memories’ will be perceived as ‘things remembered from the
past, recollections’. The relevant public will understand the word ‘MEMORY’ in the
Decision on Opposition No B 2 684 317 page: 4 of 6
earlier mark with the meaning given above and the word ‘PLACE’ as ‘a portion of
space available or designated for or being used by someone’, and therefore the
expression as a whole as ‘a place for a memory’.
The applicant is of the opinion that the term ‘MEMORY’ of the earlier mark has a low
distinctive character as it refers to data storage devices. However, it can be noted
that the mark has to be appreciated globally. In the case at issue the terms
‘MEMORY PLACE’ constitute a word-unit which the public will perceive as a whole.
As mentioned above, this expression will be perceived as ‘a place for a memory’,
which has no relation to the relevant goods in Class 9. It follows that the term
‘MEMORY’, as it appears in the earlier mark, is distinctive, due to its meaning in
relation with the word ‘PLACE’. Furthermore, due to the nature of this particular word
combination, none of the words contained in it may claim an independent, distinctive
role, but rather the expression ‘MEMORY PLACE’ constitutes a distinctive unit, taken
as a whole.
Therefore, the verbal elements of the marks have a normal degree of distinctiveness
in relation to the relevant goods in Class 9.
Visually, the signs coincide in the first five letters ‘MEMOR’ of the first verbal element
of the earlier mark and the sole verbal element of the contested sign. Consumers
generally tend to focus on the beginning of a sign when they encounter a trade mark.
This is because 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.
However, the marks differ in the additional letters ‘Y’ in the earlier mark and ‘ies’ in
the contested sign. Furthermore, the marks differ in the additional word ‘PLACE in
the earlier mark, which has no counterpart in the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‘MEMOR(Y)/(IE)’, as the letters ‘y’ and ‘ie’ will be pronounced the same. The
pronunciation differs in the sound of the additional word ‘PLACE’ in the earlier mark
and the last letter ‘s’ of the contested sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a similar
meaning on account of the words ‘MEMORY’/’Memories’, the signs are conceptually
similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
Decision on Opposition No B 2 684 317 page: 5 of 6
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.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified. It must be
appreciated globally, taking into account all factors relevant to the circumstances of
the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18;
11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence
between the relevant factors, and in particular, similarity between the trade marks
and between the goods or services. Accordingly, a greater degree of similarity
between the goods may be offset by a lower degree of similarity between the marks,
and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’,
EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24;
29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
The conflicting goods are partly identical and partly similar. The relevant public is the
public at large and the level of attention varies from average to high. The earlier mark
has a normal degree of distinctiveness.
The signs are visually, aurally and conceptually similar to an average degree.
Account is taken of the fact that average consumers 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). 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).
Taking into account all relevant factors, and especially the similarities between the
signs and the fact that the goods are identical and similar, the relevant public might
be led to believe that the relevant goods come from the same or 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 international
trade mark registration No 1 170 412 designating the European Union. It follows that
the contested trade mark must be rejected for all the contested goods.
As the earlier international trade mark registration No 1 170 412 designating the
European Union 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,
Decision on Opposition No B 2 684 317 page: 6 of 6
there is no need to examine the other earlier rights invoked by the opponent
(16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Teodora TSENOVA-
PETROVA
Saida CRABBE Richard BIANCHI
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.