OPPOSITION No B 2 677 584

Franz Harrer, Hochfellnstrasse 6, 83346 Bergen, Germany (opponent)

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 08/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 677 584 is partially upheld, namely for the following contested goods:

Class 9:         Smart phones; automatic control apparatus and instruments; portable communications apparatus namely satellite telephones and personal digital assistants [PDA]; application processors; wearable smart phones; tablet PC; computer; portable computers; notebook PC; wearable computer; apparatus for the recording/transmission or reproduction of sound and images; network attached storage; handheld media players; digital set top boxes; downloadable smart phone application (software); interfaces and peripheral devices for computers; cloud server; digital audio interface apparatus; wireless audio/video receivers; wireless communication apparatus; digital audio and video recorders and players; electric audio and visual apparatus and instruments; handheld multimedia players; modems; wireless routers; mobile phones; telecommunication machines and implements; telecommunication converters; computer software for controlling and managing access server applications; computer programs for connecting remotely to computers or computer networks; computer software; computer hardware modules for use in internet of things electronic devices; computer application software; downloadable computer software applications; operating system program for smart TV; operating system program for smart phones; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; application software for televisions; application software for smart phone; computer programs for accessing, browsing and searching online databases; computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; computer software for the remote control of security apparatus; computer software for the remote control of office machines and equipment; computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; computer software for the remote control of telephone sets and radiotelephony sets; computer software used to allow electronic devices to share data and communicate with each other; computer software and firmware used to allow electronic devices to share data and communicate with each other; computer operating system software; electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; software for network and device security; computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; software for mobile device management; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; watch bands combined with sensor; none of the aforesaid goods relating to frequency control; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications

2.        European Union trade mark application No 14 830 566 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 830 566 for the word mark ‘Pluto’. The opposition is based on European Union trade mark registration No 9 847 088 for the word mark ‘pluto’. The opponent invoked Article 8(1)(a) and (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 the following:

Class 9: Ergometers and physiological power meters; Ergometry devices; Ergometry software; Lactate meters; dynamometers; Software for the documentation, visualisation, calculation and analysis of the blood lactate values and performance status of test persons/patients with integrated functions for training control and the evaluation of sports medical parameters, and for the control of ergometers; software for the documentation, visualisation, calculation and analysis of body movements, power trend curves, velocity trend curves, angular velocities, as well as ground reaction forces and the performance status of test persons/patients with integrated functions for training control and the evaluation of sports medical parameters, and for the control of ergometers; software for ergometric apparatus for cardio-respiratory diagnostics and cardiovascular training; apparatus for measuring and improving reaction time, namely contact mats and optical sensors in conjunction with software and optical and acoustic signals and biofeedback apparatus; software for the documentation and control of rehabilitative and sports medical activities; control software for all the aforesaid instruments and apparatus, and for peripheral devices therefor; electronic publications (downloadable); pedometers, step counters; equipment and apparatus for the optical and magnetic recording and processing of data relating to movement processes; interface converters and interface data protocols for all the aforesaid instruments and apparatus, and for peripheral devices therefor; strength-measuring apparatus, weight and pressure-measuring apparatus; control software for all the aforesaid instruments and apparatus, and for peripheral devices therefore.

Class 10: Walking bars (parallel bars); strain-relief (unweighting) apparatus with patient jackets and traction apparatus, and physical therapy apparatus for the locomotion and mobilisation of patients; wheelchair ergometers, medical treadmill ergometers and other medical ergometers for rehabilitation, cardiology and ergospirometry (for exercise tolerance tests); wheelchair trainers for orthopedic training, orthopedic rehabilitation, mobilisation and for muscle building; cable control apparatus with weights and electronically controlled load simulation, for rehabilitation purposes; rehabilitation apparatus; cable control apparatus and power training equipment for physiotherapy; transport apparatus, namely hydraulic arms, pneumatic arms and electromechanically operated arms and legs for the disabled; active and passive movement apparatus for rehabilitation purposes (motor-operated apparatus for moving limbs); cardiovascular, cardiographic, respiratory, monitoring and recording instruments; apparatus for measuring pulse, heart, brain and nerve functions; parts and spare parts for all the aforesaid instruments and apparatus.

Class 28: Gymnastic and sporting articles, namely treadmills, ladder apparatus (continuous ladders, climbing equipment), bicycle trainers, steppers, arm trainers, cross-trainers, swimming simulation training equipment, sprint trainers (traction support and traction resistance trainers); gymnastic and sporting articles, not included in other classes, fitness apparatus; electronic, mechanical, hydraulic and pneumatic power training equipment and endurance training equipment; parallel bars for gymnastics.

The contested goods are the following:

Class 9: Smart phones; Portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; Display for mobile phones; Display modules for mobile phones; Application processors; Wearable Smart phones; Tablet PC; Computer; Printers for use with computers; Portable computers; Notebook PC; Monitors (computer hardware); Monitors for commercial purpose; Digital Signage; Wearable Computer; Television receivers; Display for television receivers; Display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED Display; Wireless headsets; Headset; Wireless headset for mobile phones; Ear phones; Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Apparatus for the recording/transmission or reproduction of sound and images; Network attached Storage; Chargers for electric batteries for smart phones (Wireless chargeable); Liquid crystal protective film for smart phones; Smart phone rings; Power supplies for smart phones; DVD player; Optical disc player; Handheld media players; Handheld CD players; Mobile phones cases; Supporting speaker for mobile phones; Flip cover for mobile phones; Tablet computers cases; Flip cover for tablet computers; Batteries for mobile phones; Battery chargers for mobile phones; Supporting battery for mobile phones; Chargeable batteries; Battery compensation chargers; Battery charge devices; Mouse (computer peripheral); Keyboards; USB hardware; Universal serial bus (USB) Dongle (Wireless network adapters); Digital set top boxes; Digital cameras; Network surveillance cameras; Motion recognizing sensors; Gyro sensors using GPS functions; Motion detectors; Invader sensors; Privacy protection sensors; Alarm sensors for refrigerators; Alarm sensors for washing machines; Range sensor; Digital sensory devices; Object detecting sensors; Sensor controllers; Pressure sensors; Sensors for measuring instruments; Window opening and closing detecting sensors; Door opening and closing detecting sensors; Remote control apparatus; Transmitters and receivers of electronic signals; Adapters for wireless network access; Multi-function touch buttons; Sensor station; Audio speakers; Digital door locks; Remote controls for controlling electronic products; Home network devices; Electronic security system for home network; Home automation device; Downloadable smart phone application (software); Interfaces and peripheral devices for computers; Cloud server; Server for home network system; Server for home automation; Digital audio interface apparatus; Wireless audio/video receivers; Wireless communication apparatus; Remote multi switches; Oscillation sensor devices; Air pollution measuring devices; Measuring and control devices for air conditioning technology; Air measuring apparatus; Dust measuring apparatus; Weight scales not for medical purposes; Measuring apparatus not for medical purposes; Automatic control apparatus and instruments; Light switches; Electric power distribution apparatus; Apparatus for improving power efficiency; Apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; Lighting control apparatus; Apparatus for diagnosing electrical power installations; Apparatus for measuring/monitoring/analyzing electricity consumption; Electric wire and cable; Digital audio and video recorders and players; Speaker systems; Electric audio and visual apparatus and instruments; Handheld multimedia players; Modems; Wireless routers; Antennas for wireless communications apparatus; Remote air conditioning control devices; Telemetric apparatus and instruments; Remote control telemetering machines and apparatus; Mobile phones; Telecommunication machines and implements; Remote control apparatus for controlling lighting; Telecommunication converters; Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Computer software; Digital electronic controllers; Plugs; Sockets, plugs and other contacts (electric connectors); Solar cell wafer; Modules for photovoltaic power generation; Solar wafers; Solar batteries; Crystalline silicon solar power cells; Solar cell plates; Solar cell panels; Solar power panel for generation; Solar panels for electricity generation; Solar panels for the production of electricity; Inverter used in solar power generation; Accumulators for photovoltaic power; Electric control devices for heating and energy management; Computer hardware modules for use in internet of things electronic devices; Computer application software; Downloadable computer software applications; Operating system program for smart TV; Operating system program for smart phones; Multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; Application software for Televisions; Application software for smart phone; Computer programs for accessing, browsing and searching online databases; Computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; Computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; Computer software for the remote control of security apparatus; Computer software for the remote control of office machines and equipment; Computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; Computer software for the remote control of telephone sets and radiotelephony sets; Computer software used to allow electronic devices to share data and communicate with each other; Computer software and firmware used to allow electronic devices to share data and communicate with each other; Computer operating system software; Electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; Software for network and device security; Computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; Software for mobile device management; Watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Watch bands combined with sensor; none of the aforesaid goods relating to frequency control; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports,athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications.

Class 14: Watches; Parts and fittings for watches; Wristwatches; Electronic clocks and watches; Bracelets with precious metal; Watch bands; Control clocks; Watches with wireless communication function; Watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications.

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 and the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 downloadable smart phone application (software); computer software for controlling and managing access server applications; computer programs for connecting remotely to computers or computer networks; computer software; computer application software; downloadable computer software applications; operating system program for smart TV; operating system program for smart phones; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; application software for televisions; application software for smart phone; computer programs for accessing, browsing and searching online databases; computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; computer software for the remote control of security apparatus; computer software for the remote control of office machines and equipment; computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; computer software for the remote control of telephone sets and radiotelephony sets; computer software used to allow electronic devices to share data and communicate with each other; computer software and firmware used to allow electronic devices to share data and communicate with each other; computer operating system software; electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; software for network and device security; computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; software for mobile device management; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are, despite the fact that according to the limitation made by the applicant its goods are not used for specific purposes or in relation to specific goods, at least similar to the opponent’s software goods, for example control software for all the aforesaid instruments and apparatus (for example dynamometers). As all the goods are software, they coincide in their nature. The opponent’s software goods are rather general and not highly specialised. Therefore, they might also be produced by the same undertakings as no different specific expertise is needed to develop those types of software, they are distributed through the same distribution channels and might target the same relevant public.

The contested automatic control apparatus and instruments; smart phones; portable communications apparatus namely satellite telephones and personal digital assistants [PDA]; application processors; wearable smart phones; tablet PC; computer; portable computers; notebook PC; wearable computer; apparatus for the recording/transmission or reproduction of sound and images; network attached storage; handheld media players; digital set top boxes; interfaces and peripheral devices for computers; cloud server; digital audio interface apparatus; wireless audio/video receivers; wireless communication apparatus; digital audio and video recorders and players; electric audio and visual apparatus and instruments; handheld multimedia players; modems; wireless routers; mobile phones; telecommunication machines and implements; telecommunication converters; computer hardware modules for use in internet of things electronic devices; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; watch bands combined with sensor; none of the aforesaid goods relating to frequency control; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are various data processing apparatus, devices and peripherals. These goods are, despite the fact that, according to the limitation made by the applicant its goods are not used for specific purposes or in relation to specific goods, at least similar to a low degree to the opponent’s control software for all the aforesaid instruments and apparatus (for example dynamometers). The opponent’s data processing apparatus and devices and peripherals are designed to work hand in hand with software. Mostly, the software is not an integrated part of those devices, but can be purchased independently from these and serves, for example, to give them more or different functionalities. Companies that manufacture processing apparatus, devices and peripherals usually also produce software, share the same distribution channels and target the same relevant public. Moreover, they are complementary.

The remaining portable communications apparatus namely handsets, walkie-talkies; display for mobile phones; display modules for mobile phones; printers for use with computers; monitors (computer hardware); monitors for commercial purpose; digital signage; television receivers; display for television receivers; display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED display; wireless headsets; headset; wireless headset for mobile phones; ear phones; audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; chargers for electric batteries for smart phones (wireless chargeable); liquid crystal protective film for smart phones; smart phone rings; power supplies for smart phones; DVD player; optical disc player; handheld CD players; mobile phones cases; supporting speaker for mobile phones; flip cover for mobile phones; tablet computers cases; flip cover for tablet computers; batteries for mobile phones; battery chargers for mobile phones; supporting battery for mobile phones; chargeable batteries; battery compensation chargers; battery charge devices; mouse (computer peripheral); keyboards; USB hardware; universal serial bus (USB) dongle (wireless network adapters); digital cameras; network surveillance cameras; motion recognizing sensors; gyro sensors using GPS functions; motion detectors; invader sensors; privacy protection sensors; alarm sensors for refrigerators; alarm sensors for washing machines; range sensor; digital sensory devices; object detecting sensors; sensor controllers; pressure sensors; sensors for measuring instruments; window opening and closing detecting sensors; door opening and closing detecting sensors; remote control apparatus; transmitters and receivers of electronic signals; adapters for wireless network access; multi-function touch buttons; sensor station; audio speakers; digital door locks; remote controls for controlling electronic products; home network devices; electronic security system for home network; home automation device; server for home network system; server for home automation; remote multi switches; oscillation sensor devices; air pollution measuring devices; measuring and control devices for air conditioning technology; air measuring apparatus; dust measuring apparatus; weight scales not for medical purposes; measuring apparatus not for medical purposes; light switches; electric power distribution apparatus; apparatus for improving power efficiency; apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; lighting control apparatus; apparatus for diagnosing electrical power installations; apparatus for measuring/monitoring/analyzing electricity consumption; electric wire and cable; speaker systems; antennas for wireless communications apparatus; remote air conditioning control devices; telemetric apparatus and instruments; remote control telemetering machines and apparatus; remote control apparatus for controlling lighting; digital electronic controllers; plugs; sockets, plugs and other contacts (electric connectors); solar cell wafer; modules for photovoltaic power generation; solar wafers; solar batteries; crystalline silicon solar power cells; solar cell plates; solar cell panels; solar power panel for generation; solar panels for electricity generation; solar panels for the production of electricity; inverter used in solar power generation; accumulators for photovoltaic power; electric control devices for heating and energy management; none of the aforesaid goods relating to frequency control; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are dissimilar to the opponent’s goods in Classes 9, 10 and 28. These goods have a different nature, a different purpose and different methods of use. Finally, they are not complementary nor are they in competition with each other.

Contested goods in Class 14

The contested watches; wristwatches; electronic clocks and watches; control clocks; watches with wireless communication function; watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs; parts and fittings for watches; bracelets with precious metal; watch bands; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are dissimilar to the opponent’s goods in Classes 9, 10 and 28. Even if some of the contested goods may be used in relation to software, the software of the opponent is meant for specific different types of goods which are explicitly excluded by the applicant. These goods have a different nature, a different purpose and different methods of use. Finally, they are not complementary nor are they in competition with each other.

2. The signs

pluto	Pluto
Earlier trade mark	Contested sign

Both marks are word marks. As both signs are word marks it is irrelevant whether they are written in lower-case or upper-case letters or a combination of both (31/01/2013, T-66/11, ‘Babilu’, EU:T:2013:48, § 57).

The signs are identical.

3. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking
into account all the 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.

The signs are identical and the contested goods are partly (at least) similar, partly (at least) similar to a low degree and partly dissimilar.

Taking into account the interdependence principle mentioned above, it is considered that the partly low similarity between the goods is outweighed by the identity between the signs.

Therefore, the relevant public might be led to believe that the relevant goods come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be at least similar and similar to a low degree to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on ground under Article 8(1)(a) EUTMR and directed against the remaining goods because the goods are obviously not identical.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Ric WASLEY

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.