OPPOSITION No B 2 677 659

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 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 677 659 is partially upheld, namely for the following contested goods:

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; Semiconductor chips; 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); Power supplies for smart phones; DVD player; Optical disc players; Handheld media players; Handheld CD players; Supporting speaker 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; Pressure sensors; Sensors for measuring instruments; Window opening and closing detecting sensors; Door opening and closing detecting sensors; Remote control apparatus; 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); 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; Weight scales not for medical purposes; Light switches; Electric power distribution apparatus; Lighting control apparatus; 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; 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; 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 operating system software; 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 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; Wristwatches; Electronic clocks; Control clocks; Electronic watches; Watch bands; 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.

2.        European Union trade mark application No 14 875 637 is rejected for all the above goods. It may proceed for the remaining goods, namely:

        Class 9: Mobile phones cases; Flip cover for mobile phones; Liquid crystal protective film for smart phones; Smart phone rings; 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: Bracelets with precious metal; 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.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 875 637, ‘Sirius’. The opposition is based on European Union trade mark registration No 13 877 121 ‘sirius’ and German trade mark registration No 3 020 1101 7348, ‘sirius’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the following national earlier trade marks on which the opposition is based, that is, German trade mark registration No 3 020 1101 7348, ‘sirius’.

On 15/06/2016, the opponent was give two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 20/10/2016.

The opponent did not submit any evidence concerning the substantiation of the aforesaid earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark. Therefore, the opposition shall proceed based solely on European Union trade mark registration No 13 877 121, ‘sirius’.

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; Dynamometers; Wheelchair ergometers; Treadmill ergometers; 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; Data processing apparatus; Electronic apparatus for data management for medical use; Electric/electronic apparatus for measuring reaction times and for improving reaction times; 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; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Data processing equipment and computers; Hardware and software and parts therefor, included in class 9; Magnetic data carriers; Digital storage media; Calculators; Electronic notice boards; Remote control apparatus; Electronic publications, downloadable; Pedometers, step counters; Chip cards (cards with integrated circuits); Smart card readers; Magnetic stripe cards and readers therefor; Electric and electronic equipment, apparatus and instruments for the registering, storage, verification and application of biometric data; Dialogue computers and installations and systems composed thereof; Electric and electronic equipment and apparatus for the optical and magnetic recording and processing of data relating to movement processes; Interfaces for computers; Strength-measuring apparatus, weight and pressure-measuring apparatus; Solar installations for power generation; Solar panels for the production of electricity; Inverter; electronic apparatus and instruments for control, regulation, acquisition and monitoring; Photovoltaic installations; Electric storage apparatus; Software for controlling, monitoring and analysing for all the aforesaid instruments and apparatus and for the associated peripheral devices; Interface cards, interface converters and interface data protocols for all the aforesaid instruments and apparatus, and for peripheral devices therefor; parts, Accessories and spare parts for all the aforesaid instruments and apparatus; None of the aforesaid goods for heating and/or water supply applications; None of the aforesaid goods including goods for use in the field of thermal analysis; All of the aforesaid goods in class 9 relating solely to applications and/or apparatus for therapy, rehabilitation, medicine, sports, ergometry, performance diagnostics (sports), sports science and sports diagnostics, other than for use in relation to credit cards or payment systems.

Class 10:        Apparatus for measuring pulse, heart, brain and nerve functions; Walking bars (parallel bars); Invalid walkers, Except mobile walking aids; Strain-relief apparatus with patient jackets and traction apparatus, and physical therapy apparatus for the locomotion and mobilisation of patients; Physical exercise apparatus, for medical purposes; 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; hydraulic arms, pneumatic arms and electromechanically operated arms for the disabled; Active and passive movement apparatus for rehabilitation purposes (expander-driven or motor-operated apparatus for moving limbs); wheelchair-ergometers; Medical treadmill ergometers and other medical ergometers for rehabilitation and ergospirometry (for exercise tolerance tests); Fitted transport cases, boxes and racks exclusively for medical apparatus and for the associated peripheral devices; Parts, accessories and spare parts for all the aforesaid instruments and apparatus; Lactate meters; excluding orthopaedic implants, prostheses, surgical equipment and instruments, and parts and fittings thereof, as well as accessories, cases, boxes and racks for all the aforementioned excluded goods; None of the aforesaid goods in the field of spinal implants and surgical and medical instruments and apparatus for spinal surgery.

Class 28:        Gymnastic and sporting apparatus; treadmills, ladder apparatus (continuous ladders, climbing equipment), bicycle trainers, steppers, arm trainers, cross-trainers (full body trainer), swimming simulation training equipment, sprint trainers (traction support and traction resistance trainers); gymnastic parallel bars; games; playthings; gymnastic and sporting articles, not included in other classes, fitness apparatus; electronic, mechanical, hydraulic and pneumatic power training equipment and endurance training equipment; cable control apparatus with expanders or weights and electronically controlled load simulation, for sports and fitness purposes; power training equipment for sports and fitness; motion-support devices, motion-resistance devices and motion-simulation devices for sports purposes; parts, accessories and spare parts for all the aforesaid instruments and apparatus.

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; Semiconductor chips; 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 players; 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; Pressure sensors; Sensors for measuring instruments; Window opening and closing detecting sensors; Door opening and closing detecting sensors; Remote control apparatus; 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); 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; Weight scales not for medical purposes; Light switches; Electric power distribution apparatus; Lighting control apparatus; 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; 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; 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 operating system software; 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 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.

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.

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.

Preliminary remark

The respective goods each have limitations. The opponent’s Class 9 includes the following limitation: None of the aforesaid goods for heating and/or water supply applications; None of the aforesaid goods including goods for use in the field of thermal analysis; All of the aforesaid goods in class 9 relating solely to applications and/or apparatus for therapy, rehabilitation, medicine, sports, ergometry, performance diagnostics (sports), sports science and sports diagnostics, other than for use in relation to credit cards or payment systems.

The contested Class 9 goods are limited as follows: 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. The Class 14 goods include the following limitation: 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.

The limitations limit the purpose to which the goods are to be put. On the one hand the opponent’s goods are solely for use in relation to sports science, medical and rehabilitation (as listed above) and, on the other hand, the contested goods are not for use in sports science, medical and rehabilitation.

The applicant argues that in view of the disclaimer, ‘the goods in comparison have no point of contact anymore’. This is incorrect. Whilst the goods cannot be considered identical, a limitation of this nature does not result in the goods being dissimilar per se. Comparison of goods is a multi-factor assessment (as listed above), one of these being the purpose of the goods. Just because the purpose of the goods may differ they could nevertheless have the same nature, be produced by the same manufacturer and similarity may exist. For example, a computer which is specifically adapted in some way to be used in connection with sports could easily be adapted by the manufacturer to those who do not require it to be used in connection to such a market.

For ease of reference, rather than continuously repeat the limitations for both the contested and earlier goods they shall be referred to as ‘plus limitation’. In some cases the Opposition Division will mention the goods without the limitation and will explain in the conclusion the impact of the limitations to the respective comparison.

Contested goods in Class 9

The contested Computer; Wearable Computer; Portable computers; Tablet PC; Notebook PC are generally considered to be identical the opponent’s computers. However, in view of the limitations of the marks’ specifications, the purpose of the goods differs so they are instead considered to be highly similar.

The contested Printers for use with computers; Monitors (computer hardware); Monitors for commercial purpose; LED displays; OLED Display; Wireless headsets; Headset; Wireless headset for mobile phones; Ear phones; Apparatus for the recording/transmission or reproduction of sound and images; DVD player; Optical disc players; Handheld media players; Handheld CD players; Keyboards; Mouse (computer peripheral); USB hardware; Modems; Wireless routers; Antennas for wireless communications apparatus; Cloud server; Server for home network system;

Server for home automation; Digital audio interface apparatus; Computer hardware modules for use in internet of things electronic devices; Network attached Storage; Universal serial bus (USB) Dongle (Wireless network adapters); Adapters for wireless network access; Home network devices;  Wireless audio/video receivers; Wireless communication apparatus; Application processors. All of the aforementioned goods are typically considered to be included in the broad term hardware. However, in light of the respective limitations this renders the similarity to being at least similar if not highly similar.

The contested Remote control apparatus appears also in the opponent’s goods. The contested TV remote controls; Remote control apparatus for controlling lighting; Remote controls for controlling electronic products; Remote air conditioning control devices are normally included in the broader term covered by the opponent’s remote control apparatus. Taking the limitations into account these goods are less likely to have the same purpose and therefore this renders the degree of similarity to being highly similar.

The contested digital signage overlaps with the opponent’s electronic notice boards. Therefore, they are generally considered to be identical. However, in view of the limitation, they are considered to be highly similar.

The contested 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 operating system software; 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; Downloadable smart phone application (software); Computer software for controlling and managing access server applications; Computer programs for connecting remotely to computers or computer networks; Electronic security system for home network are all goods generally considered to be covered under the broad term software that appears in the opponent’s specifications. Therefore, once again the limitation applied to each set of goods results in them being highly similar.

The contested Digital door locks are generally included in, or overlap with, the broad category of the opponent’s signalling apparatus and instruments in Class 9. Therefore, when taking the limitation into account they are similar to a high degree.

The contested Network surveillance cameras are typically included in the opponent’s broader terms surveying, checking (supervision) apparatus and instruments. Therefore, in the context of these proceedings the goods are considered to be highly similar.

The contested Power supplies for smart phones; Chargers for electric batteries for smart phones (Wireless chargeable); Batteries for mobile phones; Battery chargers for mobile phones; Chargeable batteries; Battery compensation chargers; Battery charge devices; Lighting control apparatus; Supporting battery for mobile phones; Light switches; Remote multi switches; Electric power distribution apparatus; Accumulators for photovoltaic power; Semiconductor chips; Modules for photovoltaic power generation; Inverter used in solar power generation  are typically included in and therefore identical to apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. However, since the limitation may have an effect on the purpose, they are consequently considered to be highly similar.

The contested Motion detectors; Invader sensors; Privacy protection sensors; Alarm sensors for refrigerators; Alarm sensors for washing machines; Range sensor; Digital sensory devices; Motion recognizing sensors; Gyro sensors using GPS functions; Object detecting sensors; Window opening and closing detecting sensors; Door opening and closing detecting sensors; Pressure sensors; Sensors for measuring instruments; Multi-function touch buttons; Sensor station; Home automation device; Oscillation sensor devices; Air pollution measuring devices; Remote control telemetering machines and apparatus; weight scales not for medical purposes; Electric control devices for heating and energy management; Telecommunication converters; Telemetric apparatus and instruments are generally considered to be identical to the opponent’s scientific, nautical, weighing, measuring, signalling apparatus and instruments. However, applying the principles relating to the limitation set out above, they are considered to be highly similar.

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; 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; Telecommunication machines and implements; Watch bands combined with sensor typically overlap with the opponent’s dialogue computers and installations and systems composed thereof. Taking the limitation into consideration they are considered to be highly similar.

The contested 3D spectacles for television receivers are included in the broad category of the opponent’s optical instruments in Class 9. Therefore, taking the limitation into consideration, they are considered to be highly similar goods.

The contested Smart phones; mobile phones; Wearable Smart phones; Portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA] ‘plus limitation’ are considered to be at least similar with the opponent’s computers ‘plus limitation’ in Class 9 as they can coincide in producer, distribution channels and method of use. Furthermore they are in competition.

The contested solar panels for the production of electricity appears in the opponent’s goods. Therefore, they are considered to be highly similar. The contested Solar power panel for generation; Solar panels for electricity generation are also considered to be highly similar since in the absence of the respective limitations they would be considered identical.

The contested solar wafers; Solar batteries; Crystalline silicon solar power cells; Solar cell plates; Solar cell panels; Solar cell wafer; Plugs; Sockets, plugs and other contacts (electric connectors); Electric wire and cable ‘plus limitation’ are at least similar to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity ‘plus limitation’ as they coincide in the producers and distribution channels.

The contested Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Audio speakers; Speaker systems; Supporting speaker for mobile phones; Television receivers; Handheld multimedia players; Digital set top boxes; Digital cameras; Digital audio and video recorders and players; Electric audio and visual apparatus and instruments; Display for mobile phones; Display modules for mobile phones; Display for television receivers; Display modules for television receivers are at least similar to the opponent’s data processing apparatus; accessories and spare parts; photographic, cinematographic, optical, apparatus and instruments. They coincide in producers, distribution channels and are in competition with one another.

The contested tablet computers cases; flip cover for tablet computers are similar to a low degree to the opponent’s computers; accessories and spare parts for all the aforesaid instruments and apparatus as they are specifically used in relation to the opponent’s goods. The fact that they have their relevant public and distribution channels in common cannot be excluded. Further, they are complementary.

The contested Mobile phones cases; Flip cover for mobile phones; Liquid crystal protective film for smart phones; Smart phone rings are all accessories which are specifically for mobile phones. Since the earlier mark does not cover mobile phones or their accessories, and in light of the limitation, there is no obvious overlap or point of similarity between these goods and those of the opponent. They differ in their nature and purpose, the distribution channels, sales outlets and producers. They are not in competition with one another nor are they complementary. They are not similar.

Contested goods in Class 14

The contested Watches; Wristwatches; Electronic watches; Watch bands; 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 are all goods which are not limited to traditional watches. Goods which are primarily time pieces fall in Class 14, but such goods may also serve other purposes which are the same as computers. Consequently there is some overlap between the purposes of the above mentioned watches in Class 14 and Class 9 computers. Nowadays the goods are manufactured by the same companies, they are sold through the same distribution channels and they target the same public. They can also have the same method of use. Therefore, taking the limitation into account the contested goods are similar to a low degree to the opponent’s Class 9 computers.

The contested Electronic clocks; Control clocks are goods which are used to measure time. Despite the limitation the nature of the aforementioned goods are the same as the opponent’s electronic/electric apparatus for measuring reaction times. They are likely to be manufactured by the same producers. Therefore, they are similar to a low degree.

The contested bracelets with precious metal are goods worn to adorn the body for aesthetic purposes. Therefore, they differ in nature to the earlier relied upon goods, particularly in light of the limitations applied to the respective goods. They are not in competition, complementary plus they are sold in different outlets via different distribution channels. They are dissimilar.

2. The signs

sirius	Sirius
Earlier trade mark	Contested sign

Both signs are word mars and therefore, it is irrelevant whether they are depicted in lower or title case. The signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical. The goods have been found to be partly similar to varying degrees and partly dissimilar.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17). This is known as the interdependency principle.

In view of the above, since the marks are identical this offsets goods which have a lesser degree of similarity.  Therefore, the Opposition Division finds that there is a likelihood of confusion and the contested trade mark must be rejected for the goods found to be similar (to varying degrees) 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 grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because those goods are considered to be dissimilar.

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

Ioana MOISESCU

Mark KING

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.