OPPOSITION No B 2 633 751

dreamGEAR LLC, 20001 S. Western Avenue, Torrance, California 90501, United States of America (opponent), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

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

On 11/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 633 751 is upheld for all the contested goods.

2.        European Union trade mark application No 14 575 054 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 575 054 ‘I.A SOUND’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 5 639 265 ‘i.Sound’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

The notice of opposition, as filed on 04/01/2016, was based on several earlier trade marks. In the course of the opposition proceedings, following a proof of use request, the opponent decided to proceed on the basis of only one of the earlier rights initially invoked as basis of the opposition, namely European Union trade mark registration No 5 639 265. Therefore, only this earlier right will be examined below.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use.

In the present case the contested trade mark was published on 30/09/2015. The date of registration of the earlier trade mark is 28/10/2015. Therefore, as the earlier mark has not been in force for five years before the date of publication of the contested trade mark, the request for proof of use is inadmissible, a fact that has been pointed out by the opponent and not disputed by the applicant.

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, inter alia, the following:

Class 9: Transmitters; portable transmitters; radio transmitters; portable radio transmitters; wireless transmitter; video transmitters; transmitters for use with computers and handheld digital electronic devices; transmitter receivers; radio receivers; image scanners; video viewers; media readers; electronic amusement apparatus adapted for use with television receivers only; computer games software; multimedia apparatus and instruments; televisions and television games apparatus and instruments; pre-recorded vinyl records, audio tapes, digital audio tapes, digital audio cassette tapes, audio video tapes, video tapes, audio video cassettes, audio video discs; audio tapes; CD-ROMs; digital versatile discs; magnetic data carriers, recording discs; sound amplifiers; stereo amplifiers and speaker base stations; automobile stereo adapters; data processing equipment and computers; handheld digital electronic devices with wireless communication; apparatus for data storage; hard drives; miniature hard disk drive storage units; electronic and mechanical accessories for portable and handheld digital electronic devices; mouse pads; computer docking stations; batteries; rechargeable batteries; chargers for electric batteries; connectors; electrical connectors; chargers for portable and handheld electronic devices; battery charges; battery packs; wires; cables and adaptors; sockets; wired and wireless remote controls; microphones; cases adapted for batteries; headphones; stereo headphones; in-ear headphones; earphones; two-way plugs for headphones; plug adaptors; plug adaptors for headphones; noise suppression apparatus; stands for portable and handheld digital electronic devices; monitor speakers; memories boards; monitors; displays; keyboards; cables; modems; printers; disk drives; cameras; bags and cases adapted for computers; armbands, covers, bags and cases adapted or shaped to contain portable handheld digital electronic devices; armbands, covers, bags and cases all for use with portable and handheld digital electronic devices; parts and fittings for all the aforesaid goods; none being for use exclusively for telephones or telephone products.

The contested goods are the following:

Class 9: Sound bars; Wireless speakers; Audio receivers; Audio speakers; Portable speakers; Smart phones; Mobile phones; Wearable smart phones; Wireless headsets; Headsets; Wireless headsets for mobile phone; Wireless headsets for smart phones; Digital Settop box; Application software; Tablet computers; Monitors for computer; Wearable computers; Computers; Portable computers; Wireless headsets for tablet computer; Television receivers; Audio component system composed of surround sound speakers, loudspeakers, tuners, sound mixers, equalizer, audio recorders and radio receivers; Apparatus for recording, transmission or reproduction of sound or images; Earphones; DVD players; Portable media players; Network communication apparatus; Wireless network communication apparatus; Software for mobile phone; Application software for smart phone; Application software for smart phone camera; Computer application software for mobile phone; Computer software.

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

Computers and earphones are identically contained in both lists of goods.

The contested computer software includes, as a broader category the opponent’s computer games software. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Data processing equipment of the earlier sign, as a broad category, includes apparatus for recording, transmission or reproduction of sound or images, digital settop box and television receivers of the contested sign, which goods are therefore considered identical.

The contested smart phones; mobile phones; wearable smart phones are included in the broader category of the opponent’s handheld digital electronic devices with wireless communication. Therefore, they are identical. The same premise applies to tablet computers; wearable computers; portable computers of the contested sign, which are included in the broader data processing equipment and computers of the earlier mark and are therefore identical.

Monitors for computers of the contested mark are included in monitors of the earlier mark and are hence identical.  

The contested application software; software for mobile phone; application software for smart phone; computer application software for mobile phone overlap with computer games software of the earlier mark to the extent that software for mobile and smart phones is concerned. Therefore, these goods are identical.

The contested audio component system composed of surround sound speakers, loudspeakers, tuners, sound mixers, equalizer, audio recorders and radio receivers; DVD players; portable media players; sound bars; wireless speakers; audio receivers; audio speakers; portable speakers are included in, or at least overlap to a considerable extent with, the broader category multimedia apparatus and instruments of the earlier sign and are hence identical.

The contested wireless headsets; headsets; wireless headsets for mobile phone; wireless headsets for smart phones; wireless headsets for tablet computer are included in, or at least overlap with, the broader category of electronic and mechanical accessories for portable and handheld digital electronic devices of the earlier mark.

Network communication apparatus and wireless network communication apparatus of the contested sign include, as a broader category, inter alia transmitters for use with computers and handheld digital electronic devices, wireless transmitters of the earlier mark. Therefore, they are identical.

Application software for smart phone camera of the contested sign is similar to computer games software of the earlier mark since they have the same nature, often are produced by the same manufacturer, share the same end users and distribution channels.

The applicant argues that the contested goods are dissimilar to those of the earlier mark, stating they have different purpose and end users. This position is not supported by arguments or evidence and may not be accepted by the Opposition Division. Further, given that the earlier mark is not subject to the use obligation, the arguments of the applicant that part of the goods of the opponent are outdated and not offered by the opponent, are irrelevant.

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 and similar are directed at the public at large and at business customers with specific professional knowledge and expertise. The degree of attention may vary from average to high depending on the price, frequency of purchase of the goods and how specialised they are, e.g. computers are considerably expensive goods, not purchased on a daily basis and should meet specific technical requirements when required to serve specific professional needs.

3. The signs

i.Sound	I.A SOUND
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element of the signs ‘Sound’ is an English word, having the meaning of ‘vibrations that travel through the air or another medium and can be heard when they reach a person's or animal's ear’. It is not meaningful in certain territories, for example, for the non-English-speaking part of the public. Consequently, as this represents scenario where the word ‘Sound’ is distinctive, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

The compared signs are word marks, the earlier one comprising the element ‘i.Sound’ and the contested one – the letters ‘I’ and ‘A’ separated by a dot without any space between them and the word ‘SOUND’.

Even though it is the rule 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, they will break it down into elements in certain cases, inter alia when the sign itself is broken down visually into various parts through the use of a punctuation mark. In this respect, even though the earlier mark is written without any space between the letters, thus implying it is a one-component mark, it is likely to be perceived as consisting of the letter ‘I’ and the word ‘Sound’, due to the fact that there is a dot after ‘I’, which clearly divides the word element into two parts. The prefix ‘I’, is very commonly used in the digital or internet context as an abbreviation for internet. In view of the goods at issue, the letter ‘I’ may be perceived by part of the consumers as alluding to internet, and internet-related goods. Therefore, for part of the consumers the letter ‘I’ would be weak with respect to part of the goods at issue.  

‘I.A’ of the contested sign is separated from ‘SOUND’ by a space and will be perceived as a separate element. What is said above regarding the possible perception of ‘I’, especially bearing in mind there is a dot between it and the following letter, is fully applicable here as well. The letter ‘A’ does not convey any obvious meaning.

The common element of the signs ‘SOUND’ has no meaning for the relevant public and has, therefore, a normal degree of distinctiveness.

Considering the above, it is ‘SOUND’ in both signs which is the distinctive element in the marks at least for part of the public. For those, who do not link ‘I’ with any meaning, both signs would not have a clearly more distinctive element.

Visually, the signs are similar to the extent that all letters of the earlier sign and the punctuation mark are present in the contested sign in the following order ‘I.* SOUND’. They differ in the additional letter ‘A’ in the second position in the contested sign and the fact that the first two letters of the contested sign are visually separated from ‘SOUND’ with a space. Considering the argument of the applicant that the signs differ in the use of upper and lower case, it should be noted that the protection offered by a word mark applies to the word itself and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, the differences in the use of upper and lower case in the case at hand are irrelevant for the comparison.

In view of the above, the signs are visually 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 ‘I.* SOUND’ present identically in both signs. The pronunciation differs in the sound of the letters ‘A’ of the contested mark, representing the second syllable of the contested sign, which has no counterpart in the earlier sign. Even if the punctuation mark is pronounced, this will not influence the degree of aural similarity, since it is identically positioned in both signs. Therefore, the signs are considered aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For those who link the letter ‘I’ with internet, internet-related, which is of low distinctive character for part of the goods, the signs would be conceptually similar at least to a low degree. For those who do not see ‘I’ as alluding to some meaning, a conceptual comparison is not possible.

Since 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 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 as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Evaluating likelihood of confusion implies 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).

It has been established that ‘SOUND, which alone constitutes the distinctive element in the earlier sign (at least for part of the public), is entirely contained in and represents the distinctive element of the contested sign (at least for part of the public). The signs were found to be visually similar to a high degree, aurally similar to at least an average degree and conceptually similar at least to a low degree for those who perceive a meaning in the letter ‘I’. The relevant goods are identical and similar and the degree of attention of the public, which in the case at hand is the general public and professional public – varies from average to high. The earlier sign has a normal degree of distinctiveness.

In view of the above, upon taking into account the interdependence between the relevant factors, a finding is reached that a likelihood of confusion may exist on the part of the non-English-speaking part of the public if the two signs are used for identical and similar goods. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 639 265. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lucinda CARNEY

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.