OPPOSITION No B 2 618 588
Samsung Electronics Co., Ltd., 129, Samsung-ro, Yeongtong-gu Suwon-si, Gyeonggi-do 443-742, Republic of South Korea (opponent), represented by Perani & Partners SpA, Piazza San Babila, 5, 20122 Milano, Italy (professional representative)
a g a i n s t
LG ELECTRONICS INC., 128 Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic of South Korea, (applicant), represented by Cohausz & Florack Patent- Und Rechtsanwälte Partnerschaftsgesellschaft Mbb, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).
On 08/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 618 588 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 423 529 ‘S HEALTHCARE’. The opposition is based on figurative European Union trade mark registration No 10 892 677 and on international trade mark registration No No 1 260 762 designating among other the United Kingdom
. The opponent invoked Article 8(1)(b) EUTMR.
- The goods and services
The goods and services on which the opposition is based are the following:
- Earlier EUTM No 10 892 677 :
Class 9: Computer application software; recorded computer software; TV sets; DVD players; cameras; camcorders; smart phones; video telephones; computer monitors; recorded computer operating programs; portable telecommunication apparatus; downloadable electronic publications; electronic pens; headphones; mobile phones; computers; tablet computers; computer software for use in recording, organizing, transmitting, manipulating, and reviewing text, data, audio files, video files and electronic games in connection with TV, computers, music players, video players, media players, mobile phones, and portable and handheld digital electronic devices.
Class 38: Computer aided transmission of messages and images; transmission of digital contents by telephone or other means of electronic communication; cellular telephone communication; transmission of voice, audio, visual images and data by wireless communication networks; telecommunications services, namely, personal communication services; transmission of information via national and international networks; operation of local area networks; data communication; transmission of data, sound and images by satellite; satellite communication services; wireless communications services; telecommunication services by mobile phones; electronic bulletin board services; communication by computer terminals; communication by television for meeting; rental of telecommunication machines and apparatus; transmission and reception of database information via the telecommunication network; internet broadcasting.
Class 41: Providing on-line publications; online electronic publishing of books and periodicals; electronic library services; correspondence course; providing information about education; instruction services; courses in internet education; arranging and conducting of conferences.
Class 42: Rental of computer software; rental of application software; rental of computers; design of computer software; maintenance and upgrading of computer software; design of advertising materials; hosting of web sites; creating and maintaining web sites for others; installation of computer software.
Class 44: Medical and pharmaceutical consultation; hygienic and beauty care for humans and animals; services for the care of the skin; medical products information; dentistry; providing medical information; physical examination services; hospitals; medical clinics; telemedicine services; providing health information; medical equipment rental; physical examination services via the internet; physical examination services by application software for smart phones; providing health information via the internet; providing health information by application software for smart phones.
2) Earlier figurative International registration No 1 260 762 designating among other, the United Kingdom :
Class 9: Application software; recorded computer software; television receivers; DVD players; cameras; camcorders; smart phones; video telephones; computer monitors; recorded computer operating programs; portable telecommunication apparatus; downloadable electronic publications; electronic pens; headphones; mobile phones; computers; tablet computers; computer software for use in recording, organizing, transmitting, manipulating, and reviewing text, data, audio files, video files and electronic games in connection with TV, computers, music players, video players, media players, mobile phones, and portable and handheld digital electronic devices.
Class 38: Computer aided transmission of messages and images; transmission of digital contents by telephone or other means of electronic communication; cellular telephone communication; transmission of voice, audio, visual images and data by wireless communication networks; telecommunications services, namely, personal communication services; transmission of information via national and international networks; local area networks communication; data communication; transmission of data, sound and images by satellite; satellite communication services; wireless communications services; telecommunication services by mobile phones; electronic bulletin board services; communication by computer terminals; communication by television for meeting; rental of telecommunication machines and apparatus; transmission and reception of database information via the telecommunication network; internet broadcasting.
Class 41: Providing read-only on-line publications; online electronic publishing of read-only books and periodicals; electronic library services; correspondence courses; providing information about education; instruction services; education courses through the internet; arranging and conducting of conferences.
Further to a limitation during the opposition, the contested goods are the following:
Class 7: Dish washing machines for household purposes; automatic dishwashers; washing machines; laundry washing machines for household use; electric washing machines for household purposes; clothes washing machines; dishwashers; dishwashing machines for household purposes; spin dryers for household purposes (not heated); clothes managing apparatus; steam cleaners for household purposes; electric cleaners for household purposes; vacuum cleaners; robot cleaners for household purposes; bedding cleaners for household purposes; solar power generators; apparatus for manufacturing solar battery membrane; apparatus for forming solar battery membrane; compressors as parts of machines, motors and engines; compressors for refrigerators; compressors (machines); compressors for air conditioners; compressors for dehumidifying machines; compressors for air handling apparatus; compressors for clothes managing apparatus; compressors for washing machines.
Class 11: Lamps for bathroom; Lamps for bedroom; Gas ranges; Gas oven range; Cooking ovens for household purposes; Ovens; Kitchen ranges (ovens); Hot-water heating apparatus; Solar heating apparatus; Gas refrigerators; Air conditioners for household purposes; Air conditioners; Air conditioning installations; Air conditioning apparatus; Fans (air-conditioning); Transportable air conditioners; Cooling fans; Freezers; Heating and air conditioning apparatus; Heating installations; Refrigerating or freezing showcases; Refrigerating containers; Room air conditioner; Room coolers; Refrigerating display cabinets (display cases); Range hoods for household purposes; Ventilators for household use; Ventilating fans for household use; Ventilation installations for kitchens; Solar thermal collectors (heating); Solar heat collection panels; Light emitting diode lights for automobiles; Air purifiers for automobiles; Heating and cooling systems for motor cars; Air conditioners for automobiles; Heat exchangers for automobiles; Lighting apparatus and devices for automobiles; Air purifiers (for household purposes); Household air cleaners; Air sterilizers for household purposes; Air cleaning apparatus for household purposes; Ionization apparatus for the treatment of air or water; Air humidifying apparatus; Air driers; Air sterilizing and disinfecting device; Air purifiers; Filters for air purifiers; Water filters for household purposes; Water ionizers (for household purposes); Desalination plants; Water sterilizers; Water filtering apparatus; Water purification installations; Water purifying apparatus; Water purifying apparatus and machines; Tap-water purifying apparatus; Water purifying apparatus; Purification installations for sewage; LCD illumination; LED luminaires; Organic light emitting diodes (OLED) lighting device; Pixel local storage (PLS) lighting device; Emitting diodes lamps; Incandescent lighting fixtures; Electric bulbs; Electric lighting apparatus; Solar cell lighting apparatus; Electric humidifiers for household use; Electric drying apparatus for household purposes; Electric dehumidifiers for household purposes; Dehumidifiers for household use; Anion generator humidifier; Laundry dryers, electric for household purposes; Electric dish drying machines for household purposes; Electric clothes drying machines for household purposes; Clothes dryers; Electric dehydrators; Electric ovens for household purposes; Induction ranges; Electric ranges; Electric oven ranges; Microwave ovens; Refrigerators for household purposes; Electric refrigerators (for household purposes); Electric wine cellar for household purposes; Electric water purifiers for household purposes; Electric water purification filters for household purposes; Microwave ovens for household purposes; Kimchi refrigerators; Refrigerators; Wine refrigerators; Electric humidifiers; Electric refrigerators; Electric refrigerating showcases; Electric wine coolers; Electric sterilizers for household purposes; Heat exchangers; Compressor for clothes dryers.
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 Classes 7 and 11
The contested goods are in particular machines including different types of compressors, motors and parts in Class 7 and apparatus for lightning, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes in Class 11. The opponent’s goods are in particular apparatus for recording, transmission or reproduction of sound and images in Class 9 and services in classes 38 (telecommunications), 41 (education in particular), 42 (computer related services in particular) and 44 (medical services and hygienic and beauty care services in particular). The contested goods do not have anything in common with the opponent’s goods and services. The nature, purpose and method of use of the contested goods are clearly different from those of the opponent’s goods and services. They are usually produced by different companies and sold through different distribution channels. They do not target the same relevant public and are not in competition or complementary. Consequently, they are dissimilar.
Contrarily to what mentioned by the opponent, the contested LED luminaires are not similar to the opponent’s television receivers. The fact that they use electricity is not a sufficient point of contact as it would mean that all electrical apparatus would be similar while in fact they do not have the same origin and have nothing else in common. Similarly, the fact that some contested goods in class 7 are household appliances does not make them similar to TV sets in class 9 as once again, the fact that some domestic apparatus can have the same origin, as multinationals generally have a very broad scope of activity, does not mean they usually have. The goods in class 7 serve a utilitarian, household purpose and do not record, transmit, or reproduce sound or images as the opponent’s goods in class 9. A close connection does not exist between the contested goods in Class 7 and the opponent’s goods in Class 9, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. The goods at issue are for that reason not positioned in close proximity to one another in commercial outlets selling electrical goods and electronic devices and are not, therefore, goods that can be considered complementary. Nor are they substitutes for each other since the respective purposes are completely different from one another. Very many different types of goods are powered by electricity for use in households. Many different types of goods are made of plastic and metal. The consumer will not assume the existence of a relationship from the material of the goods and whether they are powered by electricity. The improvement of living conditions of a household is a very general consideration and one which applies to almost any product used in the home.
The opponent refers to previous decisions of the Office to support its arguments and quotes B 2 237 454 of 24/09/2014 and older B 899 676 of 29/01/2008 where class 7 and 9 goods were found similar. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
|
Natascha GALPERIN |
Jessica LEWIS |
Julie GOUTARD |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.