DECISION

of the Fifth Board of Appeal

of 10 January 2017

In Case R 982/2016-5

 

Misfit, Inc.
5 Brookdale Road Salem New Hampshire 03079 United States of America	Applicant / Appellant

represented by GRAHAM WATT & CO LLP, St. Botolph’s House, 7-9 St. Botolph’s Road, Sevenoaks TN13 3AJ, United Kingdom

v

 

LG ELECTRONICS INC.
128, Yeoui-daero, Yeongdeungpo-gu Seoul  150-721 Republic of Korea	Opponent / Respondent

represented by Cohausz & Florack Patent- Und Rechtsanwälte Partnerschaftsgesellschaft MBB, Bleichstr. 14, 40211 Düsseldorf, Germany

 

APPEAL relating to Opposition Proceedings No B 2 293 184 (European Union trade mark application No 11 747 111)

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys (Chairperson), V. Melgar (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

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Decision

Summary of the facts

1. By an application filed on 17 April 2013, Misfit, Inc. (‘the applicant’) sought to register the word mark

SHINE

for the following list of goods and services, after a limitation:

Class 9 – Multifunctional electronic devices that measure, track, analyze, display, upload and transmit data related to physical activity, fitness and general health; electronic clothing accessories that measure, track, analyze, display, upload and transmit data related to physical activity, fitness and general health; mobile device software applications and computer software applications for measuring, tracking, analyzing, displaying, uploading and transmitting data transmitted from multifunctional electronic devices or specialized clothing and clothing accessories worn by users regarding their physical activity, fitness and general health; mobile device software applications and computer software applications that provide users with information and analysis regarding their physical activity, fitness and general health and provide access to an online community that focuses on physical activity, fitness and general health, in Class 9;

Class 44 – Medical services; Hygienic and beauty care for human beings; providing a web site where users can find information and analysis of their fitness, general health and participate in an online community that focuses on fitness and general health;

Class 45 – Personal and social services rendered by others to meet the needs of individuals; online social networking services in the fields of physical activity, fitness and general health.

 

2. The application was published on 25 September 2013.
3. On 16 December 2013, LG ELECTRONICS INC. (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods, namely all the goods in Class 9 listed in paragraph 1 above.  The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.
4. The opposition was based on the following right:

• EUTM No 5 409 685 for the figurative mark

filed on 23 October 2006 and registered on 25 November 2010 for the following goods:

Class 9 – Portable communications apparatus, namely, radios, handsets, walkie-talkies, satellite telephones, land line telephones, digital cellular phones.

5. By decision of 1 April 2016 (‘the contested decision’), the Opposition Division upheld the opposition for all the contested goods and ordered the applicant to bear the costs. It gave, in particular, the following grounds for its decision:

Comparison of the signs

• Visually, the signs coincide in the verbal element ‘SHINE’, which forms the contested sign and is the first and dominant verbal element of the earlier mark. The first parts of the conflicting marks are identical. 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 on the left of the sign (the initial part) the one that first catches the attention of the reader. However, the signs differ in the secondary element, ‘Black Label Series’, of the earlier mark, which has no counterpart in the contested sign. Therefore, the signs are similar to an average degree.
• Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SHINE’, which is the first and dominant element of the earlier mark. However, the pronunciation differs in the sound of the secondary element, ‘Black label Series’, of the earlier mark, which has no counterpart in the contested sign. Therefore, the signs are similar to an average degree.
• Conceptually, the public in the relevant territory will perceive the word ‘SHINE’, present both in the contested sign and as the first and dominant element of the earlier mark as, inter alia, the action of emitting light. However, the signs differ conceptually in the secondary element, ‘Black label Series’, present only in the earlier mark and understood as a series identified by a black label.  As the signs will be associated with similar meanings, the signs are conceptually similar to an average degree.

Comparison of the goods

• The conflicting goods in Class 9 have the same purpose, they have the same method of use and can be in competition with each other.  In addition, they can target the same relevant public and can have the same producer.  Overall they are similar.

Global assessment

• The relevant public for the goods in question includes the public at large. Their degree of attention is average.  The inherent distinctiveness of the earlier mark considered as a whole is normal. The opponent did not claim the earlier mark’s enhanced distinctiveness.
• The goods are similar.
• The signs are visually, aurally and conceptually similar to an average degree.  They differ in the presence of the secondary verbal element, ‘Black label Series’, in the earlier sign.  However, they are visually, aurally and conceptually identical in the verbal element ‘SHINE’, which is first and dominant element in the earlier trade mark.  Therefore due to all the aforementioned and the fact that the English-speaking part of the public could link the element the marks have in common, ‘Shine’, from a conceptual point of view, there is a likelihood of confusion.

6. On 31 May 2016, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside to the extent that the opposition was accepted. The statement of grounds of the appeal was received on 1 August 2016.

Submissions and arguments of the parties

7. In the statement of grounds the applicant refers to a completely different earlier trade mark, than the current one at issue in these proceedings.  It refers to facts and evidence in parallel opposition proceedings No B 2 289 521 initiated by the parent company of the opponent, LG Corp.
8. In its observations in reply received on 13 October 2016, the opponent requests that the appeal be rejected.  It further requests that the Board disregard the arguments presented by the applicant in the grounds for appeal since they all refer to use evidence which was neither requested nor filed by the opponent at any time.

Reasons

9. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
10. The Board notes that although the applicant filed a statement of grounds, the content of this document refers entirely to EUTM application No 15 495 641 and opposition No B 2 289 521, this opposition number appears on the cover page of the statement of grounds.
11. As the opponent rightly submits, the statement of grounds refers, from point 2 onwards, to this other opposition case where proof of use was raised by the applicant.
12. Therefore, in the absence of any argument raised against the contested decision, the appeal is dismissed and the contested decision confirmed.
13. The Board moreover agrees with the assessment of the Opposition Division concerning similarity of goods and signs and the overall assessment of the likelihood of confusion.

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Costs

14. In accordance with Article 85(6) EUTMR and Rule 94(7)(d) CTMIR the Board of Appeal fixes the costs. The cost award at first instance is confirmed (where the applicant had to bear the costs). However, given the dismissal of the appeal, the Board fixes the amount of costs to be reimbursed by the applicant to the opponent at EUR 550 for its representation costs with respect to the appeal proceedings.

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Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;
2. Confirms the contested decision;
3. Orders the applicant to pay the opponent EUR 550.

 

 

 

 

 

 

 

 

Signed   G. Humphreys

Signed   V. Melgar

Signed   A. Pohlmann

 

 

Registrar:   Signed   H.Dijkema