OPPOSITION No B 2 700 451

LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic of Korea (opponent), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211, Düsseldorf, Germany (professional representative)

a g a i n s t

Anhui Huami Information Technology Co. Ltd., 12 Floor Building A4, Nat Animation Base, No. 800 Wangjiang Road, Hefei, Anhui  230088, People's Republic of China (applicant), represented by Adamsonjones, BioCity Nottingham Pennyfoot Street, Nottingham, Nottinghamshire NG1 1GF, United Kingdom, (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 700 451 is partially upheld, namely for the following contested goods:

Class 9:         Portable and wearable multifunctional electronic devices, namely, watches, wristbands, and activity trackers featuring wireless communications for voice and data transmissions, wireless local area networking capabilities, global positioning systems, digital audio recorders and players, cameras, electronic game programs, electronic notepads, electronic organizers, and heart rate monitors; wearable digital electronic devices comprised primarily of software for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers, and display screens and also featuring a wristwatch.

Class 14:         Portable and wearable digital electronic devices comprised primarily of a wristwatch and identification bracelet for tracking and measuring heart rate, calories burned stride rate, duration, distance, and speed of physical activity during exercise.

2.        European Union trade mark application No 15 000 615 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 15 000 615 for the word mark ‘SMARTQ’. The opposition is based on European Union trade mark registration No 9 906 439, for the word mark ‘SMART Q’. 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 7:         Electric clothes washing machines; automatic dishwashers; electric vacuum cleaners.

Class 9:        Telephone sets; wireless telephone sets; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; mobile phones; mpeg audio layer-3 [mp3] players; television receivers; television remote controllers; encoded electronic chip cards for improvement of television image quality; universal serial bus [USB] drives; digital media broadcasting [dmb] players; headsets for mobile phones; portable chargers for mobile phone batteries and digital camera batteries; electronic photo albums; digital picture frames for displaying digital pictures, video clips and music; monitors for computer; lap top computers; computers; digital versatile disc [dvd] players; portable hard disk drives; apparatus for recording, transmission or reproduction of sound or images for use in telecommunications; apparatus for recording, transmission or reproduction of sound or images; electric audio and visual apparatus and instruments; stereos; computer software for mobile phone, namely, for mobile phone operating systems, sending and receiving information, to provide web-based access to applications, products and services; computer application software for television; computer application software for personal computer monitor; digital versatile disc [dvd] players for home theaters; speakers for home theaters; audio-video [av] receivers for home theaters; projectors for home theaters; integrated circuits; audio receivers; electronic toll smart cards for easy pass in highway; closed-circuit television [cctv] cameras; network monitoring cameras namely for surveillance; digital signage; thermal printers; digital colour printers; laser printers; ink jet printers; colour printers; printers for use with computers; solar batteries; recorded computer programmes [programs]; downloadable computer programs [software]; personal computer [pc] cameras; digital voice recorders; videocassette recorders; network monitors; computer software for education; electronic notepads [e-notes]; tablet computers; settop boxes; downloadable image files accessible via the internet; electronic downloadable publications; video conference system; monitors for video conference; cameras for video conference; speakers for video conference; three dimensional eyeglasses for television receivers; DNA chips; dosage dispensers; capillary tubes; oxygen transvasing apparatus; incubators for bacteria culture; test tubes; food analysis apparatus; physical and chemical laboratory apparatus and instruments; apparatus and instruments for physics; apparatus for automatic chromatography; magnetic agitators; pipettes; chemistry apparatus and instruments; software for dosimetry purposes in the field of radiotherapy; computer software for medical purposes; biochips; cell chips; testing apparatus for cell chips; analysis apparatus for cell chips; diagnostic chips for pharmaceutical purposes; diagnostic chips for medical purposes; computer software for diseases diagnostics for medical purposes; computer software for electronic chart for medical purposes; none of the aforesaid being interactive flat panel displays, interactive projectors, interactive electronic white boards, interactive electronic whiteboard computers, or interactive whiteboards; none of the aforesaid being, related to, or for use with, interactive flat panel displays, interactive projectors, interactive electronic white boards, interactive electronic whiteboard computers, or interactive whiteboards.

Class 10:         Massage apparatus; vibrating massage apparatus; electric massage apparatus for household use; massage apparatus for human body; bed vibrators; electric massage chairs; esthetic massage apparatus; medical apparatus and instruments; medical machines and apparatus; blood testing apparatus; apparatus for blood analysis; devices for measuring blood sugar; diagnostic apparatus for medical purposes; radiological apparatus for medical purposes; radiotherapy apparatus; roentgen apparatus for medical purposes; x-ray appliances for dental; irrigators for medical use; lasers for medical purposes; heart pacemakers; electric dental apparatus; orthodontic machines and instruments for dental purposes; nursing appliances; suture materials for medical purposes; electric blankets for medical purposes; electric heating pads for medical purposes; gloves for medical purposes; masks for medical purposes; lavage apparatus; portable x-ray appliances; portable x-ray detectors; gene analysis apparatus for medical purposes; DNA diagnostic apparatus for medical purposes; gene diagnostic apparatus for xenodiagnosis; gene diagnostic apparatus; automated external defibrillator [AED].

Class 11:         Electric refrigerators; refrigerators for kimchi; electric lightwave ovens for cooking, grilling and microwaving; temperature controlled electric wine cellars for household use; electric cooking ovens; electric freezers; electric laundry dryers; gas ranges; microwave ovens; gas cooktop; electric ranges for household use; air purifiers; air conditioners; hot air apparatus, namely, hot-air space heating apparatus; humidifiers; electric dehumidifier for household use; gas grills; dish disinfectant apparatus for household purposes; water purifiers for household purposes; electric water purifiers for household use; water ionizers; water ionization apparatus for household purposes; water purifiers for household purposes [non-electric]; water purifying apparatus; electric footwarmers; water purification installations; apparatus for purifying water; precision filters for water treating; desalination plants; membrane apparatus for purifying water; membrane filters for water purifiers for household purposes [non-electric]; membrane filters for electric water purifiers for household use; membrane filters for water purifiers for industry; membrane filters for water purifying apparatus; water purifying apparatus and machines used membrane filters; membrane for water treating; membrane filter apparatus for water treating; purification installations for sewage; purification installations for wastewater reclamation and reusing system; wastewater purifying and treatment apparatus; filters for wastewater; water purifiers for industry; filters for water purification installation; membrane for water purifying apparatus; solar collectors [heating]; solar water heaters; street lamps; safety lamps for underground use; germicidal lamps for purifying air; neon lamps; lanterns; dynamo lamps; implements for discharge lamps; incandescent lamps; incandescent lamp implements; ultraviolet ray lamps not for medical purposes; germicidal lamps; chandeliers; water surface lamps; mercury lamps; aquarium lights; spotlights; arc lamps; safety lamps; diving lights; decoration lamps; infrared lamps; torches for lighting; fish gathering lamp; ceiling lights; fairy lights for festive decoration; electric lights for christmas trees; standard lamps; searchlights; artificial solar lamp; floodlights; fluorescent lamps; flashlights [torches]; parts of lighting apparatus; branching pipes for air cooling apparatus; branching pipes for air conditioners; flexible hose for air cooling apparatus; flexible hose for air conditioners; sterilizing apparatus for hospital use.

The contested goods are the following:

Class 9:         Portable and wearable multifunctional electronic devices, namely, watches, wristbands, and activity trackers featuring wireless communications for voice and data transmissions, wireless local area networking capabilities, global positioning systems, digital audio recorders and players, cameras, electronic game programs, electronic notepads, electronic organizers, and heart rate monitors; wearable digital electronic devices comprised primarily of software for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers, and display screens and also featuring a wristwatch.

Class14: Horological and chronometric instruments; watches; timepieces; chronometers; watchstraps; watch bands; portable and wearable digital electronic devices comprised primarily of a wristwatch and identification bracelet for tracking and measuring heart rate, calories burned stride rate, duration, distance, and speed of physical activity during exercise.

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 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 portable and wearable multifunctional electronic devices, namely, cameras include, as a broader category the opponent’s personal computer [pc] cameras in Class 9. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested portable and wearable multifunctional electronic devices, namely, digital audio recorders and players include, as broader categories the opponent’s digital voice recorders, digital versatile disc [dvd] players in Class 9. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested portable and wearable multifunctional electronic devices, namely, electronic notepads are identically contained in both lists of goods.

The contested portable and wearable multifunctional electronic devices, namely, electronic organizers are included in the broad category the opponent’s electronic notepads. Therefore, they are identical.

The contested portable and wearable multifunctional electronic devices, namely, watches, wristbands, and activity trackers featuring wireless communications for voice and data transmissions, wireless local area networking capabilities, global positioning systems, electronic game programs, and heart rate monitors; wearable digital electronic devices comprised primarily of software for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers, and display screens and also featuring a wristwatch are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical. 

Contested goods in Class 14

The contested portable and wearable digital electronic devices comprised primarily of a wristwatch and identification bracelet for tracking and measuring heart rate, calories burned stride rate, duration, distance, and speed of physical activity during exercise include or are watches or their parts with functionalities that go beyond timekeeping only, even though they are classified in Class 14 (e.g. with a wireless telecommunication function or navigation, tracking, or guidance functions for hikers or runners). They are effectively wearable computer/devices that use an operating system and can also function as portable media players via Bluetooth or USB. Therefore, the dividing line between the different categories of these portable and wearable digital electronic devices and the opponent’s transmission or reproduction of sound or images for use in telecommunications in Class 9 is nowadays blurred. These goods may be manufactured by the same companies (traditional watch makers have started offering watches with additional ‘smart’ functions), they are sold through the same distribution channels and they target the same public. They can, moreover, have the same method of use. Therefore, these goods are considered similar.

In case of the contested horological and chronometric instruments; watches; timepieces; chronometers; watchstraps; watch bands, however, this reasoning does not apply, since these goods are clearly of a different nature, as they do not have such data processing functions, but they rather serve to measure time, give information about the time or alert individuals of a specified time. These goods are made of the traditional timekeeping elements and are either electrically powered or battery operated. They are manufactured by different companies using different techniques. Moreover, they are not sold in the same shops as the opponent’s goods in Classes 7, 9, 10 and 11 which are essentially characterised by their technological nature. Consequently, these goods are dissimilar.

2. 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 to 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.

3. The signs

SMART Q	SMARTQ
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 earlier mark is a word mark composed of the term ‘SMART’ followed by the letter ‘Q’.

The contested sign is a word mark composed of the term ‘SMARTQ’. In this case,  account should be taken of the fact that even though the Court has held that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, consumers will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Thus, even though the element ‘SMARTQ’ as a whole has no meaning, at least a part of the relevant public will dissect the term ‘SMART’ and perceive this English word in relation to the relevant goods as ‘operating as if by human intelligence by using automatic tools’ (see Collins English Dictionary online). Thus, for this part of the relevant public, this element is considered as weak in relation to the goods at stake since it indicates one of their characteristics. The same holds true insofar as the element ‘SMART’ in the earlier mark is concerned. Therefore, for part of the relevant public, the impact of the common element ‘SMART’ is limited when assessing the likelihood of confusion between the marks at issue. Nonetheless, for another part of the relevant public, it cannot be dismissed that this element has no meaning and is, therefore, normally distinctive.

The common letter ‘Q’ has no meaning, apart from being a single letter, and so it is considered distinctive.

Visually, the signs coincide in the elements ‘SMART’ and ‘Q’ which constitute the marks. They differ in the additional space between the term ‘SMART’ and the letter ‘Q’ of the earlier mark. Therefore the earlier mark is made up of two elements, whereas the contested sign is one term. Whilst considering the previous assertions regarding the distinctiveness of the elements, it is still true that the contested sign is entirely reproduced in the earlier mark.

Therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SMART(*)Q’, present identically in both signs. The space in the earlier mark has no bearing on the sound. Therefore, the signs are phonetically identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. The element ‘SMART’, included in both signs, if understood, might be associated with the meaning explained above. This is reinforced by the common concept of the letter ‘Q’. Therefore, for the part of the public that will dissect the letter ‘Q’ in both marks, the signs are conceptually highly similar. For the part of the public that does not understand the common element ‘SMART’, the marks are conceptually not similar since the letter ‘Q’ would not be dissected in the contested sign.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark for part of the public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods have been found party identical, partly similar and partly dissimilar. The earlier mark has a normal degree of distinctiveness. The signs are visually similar to a high degree, aurally identical and conceptually similar to a high degree, although for part of the public, not similar. The relevant public is the public at large whose level of attention varies from average to high.

In view of all the relevant factors, there is a likelihood of confusion even for the professional public with a high level of attention. 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).

Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the public, and, therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 9 906 439. It follows that the contested trade mark must be rejected for all the contested goods found to be identical and similar.

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 the ground under Article 8(1)(a) EUTMR and directed against the remaining goods, because neither of the marks are  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

Klaudia MISZTAL

Saida CRABBE

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.