OPPOSITION DIVISION
OPPOSITION No B 2 641 051
Ovislink Corporation, 5F., No. 6, Lane 130, Min Chuan Rd., Hsin-Tien Dist., New
Taipei City 231, Taiwan (opponent), represented by Handsome I.P. Ltd., 27-28
Monmouth Street, Bath BA1 2AP, United Kingdom (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 03/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 641 051 is partially upheld, namely for the following
contested goods:
Class 9: Smartphones; mobile phones; wearable smart phone; wireless
headsets; headsets; wireless headset for cellphones; wireless headsets for
smartphones; digital set top boxes; computer application software; computer
application software for mobile phones; computer application software for TV;
tablet PC; monitor for computers; monitors for commercial purposes; wearable
computers; computers; printers for use with computers; light emitting diode
(LED) displays; portable computers; network surveillance cameras; television
receivers; display for television receivers; 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; earphones; DVD
players; handheld media players; speakers; digital cameras; wireless cameras;
wearable telecommunication devices for the wireless receipt, storage and/or
transmission of data and messages; 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; wearable digital electronic devices comprised
primarily of a wristwatch and also featuring a telephone, software and display
screens for viewing, sending and receiving texts, emails, data and information
from smart phones, tablet computers and portable computers.
2. European Union trade mark application No 14 677 769 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
Decision on Opposition No B 2 641 051 page: 2 of 13
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 14 677 769 for the word mark ‘Air Live’. The opposition is based on
European Union trade mark registration No 4 026 597 for the figurative mark
. The opponent invoked Article 8(1)(b) EUTMR.
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, now Article 47(2) and (3) EUTMR), 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 same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of European Union
trade mark No 4 026 597 for the figurative mark on which the opposition
is based.
The contested application was published on 30/10/2015. The opponent was therefore
required to prove that the trade mark on which the opposition is based was put to
genuine use in the European Union from 30/10/2010 to 29/10/2015 inclusive.
The request was submitted in due time and is admissible as the earlier trade mark
was registered more than five years prior to the relevant date mentioned above.
Furthermore, the evidence must show use of the trade mark for the goods on which
the opposition is based, namely the following:
Class 9: Computer, integrated circuits, intercommunication apparatus,
interfaces(for computers)/ integrated circuit cards (smart cards), cameras
(photography), connections for electric lines, metal alloys (wires of -) (fuse wire),
connectors (electricity), identification threads for electric wires, electricity
mains(material for-) (wires, cables), telephone apparatus, telephone transmitters,
Decision on Opposition No B 2 641 051 page: 3 of 13
radiotelephony sets, phototelegraphy apparatus, transmitting sets
(telecommunication), transmitters of electronic signals, transistors, signs
(transmitters of electronic-), remote control of signals (electro-dynamic apparatus for
the-), receivers (telephone-), receivers (audio-and-video), readers (date processing
equipment), readers (bar code-), heliographic apparatus, electro-dynamic apparatus
for the remote control of signals, commutation (electric apparatus for-), connectors
(electricity), junction sleeves for electric cables, junction boxes (electricity),
processors (central processing units).
According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the
request for proof of use), the evidence of use must consist of indications concerning
the place, time, extent and nature of use of the opposing trade mark for the goods or
services in respect of which it is registered and on which the opposition is based.
On 31/08/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the
moment of filing the request for proof of use), the Office gave the opponent until
05/11/2016 to submit evidence of use of the earlier trade mark. As requested by the
opponent, this time limit was extended until 05/01/2017. On 08/12/2016, within the
time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Six pro forma invoices dated between 20/09/2010 and 26/08/2015 relating to the
sale of goods in the Czech Republic. The opponent also provides documents
in relation to the sale of goods in Poland, namely one pro forma invoice and
five commercial invoices dated between 01/11/2010 and 07/08/2015. The
goods are mainly video recorders, IP cameras, mounting kits, power
adapters, antennas, wireless AP routers, wireless adapter, switches, Ethernet
adapters, USB dongle, USB adapter, multi-function access point, dual radio
dual band, outdoor CPE, tape measure, pen, notepad, network multimedia
player, print server, PCI adapter, internet access server, PCI card. The
registered trademark is displayed at the top of each page of the invoice.
Article dated September 2015 in the magazine ‘ChannelWorld’ distributed in the
Czech Republic. The article concerns IP camera Air Live BU-3028. A photo
displays the registered trademark on a camera.
Article of the magazine ‘HD World’ distributed in the Czech Republic and dated
February 2014. The article includes photos of cameras bearing the earlier
trade mark ‘Air Live’ as registered. The registered trademark is displayed at
the bottom of one of the pages.
Article of the magazine ‘Safety and Security’ distributed in Poland and dated
September 2015. The registered trademark is displayed on one of the pages
and also on Outdoor CPE and IP Cam.
Article of the magazine ‘ALARM’ distributed in Slovakia and dated June 2014.
The registered trademark is prominently displayed at the top of one page and
on IP cameras.
Extract of the opponent’s webpage related to ‘Distree EMEA 2013: Surveillance
Networking Solution’, that is an exhibition that took place in Monaco between
11 February 2013 and 14 February 2013. The registered trademark was
Decision on Opposition No B 2 641 051 page: 4 of 13
displayed on the stand and this document also displays ‘Air Live’ goods,
namely IP Cameras and wireless devices.
The invoices show that the place of use is Czech Republic and Poland. This can be
inferred from the addresses of the clients. Therefore, the evidence relates to the
relevant territory.
All of the evidence is dated within the relevant period.
As regards the extent of use, all the relevant facts and circumstances must be taken
into account, including the nature of the relevant goods or services and the
characteristics of the market concerned, the territorial extent of use, and its
commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the
factors taken into account. Thus, the fact that commercial volume achieved under the
mark was not high may be offset by the fact that use of the mark was extensive or
very regular, and vice versa. Likewise, the territorial scope of the use is only one of
several factors to be taken into account, so that a limited territorial scope of use can
be counteracted by a more significant volume or duration of use.
The documents filed, namely the invoices, the articles and the evidence related to an
exhibition, provide the Opposition Division with sufficient information concerning the
commercial volume, the territorial scope, the duration, and the frequency of use.
The evidence submitted by the opponent in order to prove genuine use of the earlier
EUTM relates exclusively to Czech Republic and Poland. As stated above, the
territorial scope of the use is only one of several factors to be assessed in the
determination of whether the use is genuine or not.
The applicant argues that ‘the opponent mainly has submitted “Pro Forma Invoices”
which have no probative value at all’ [sic]. Pro forma invoices are commonly used as
preliminary invoices with a quotation, or for customs purposes in importation. They
differ from a normal invoice in not being a demand or request for payment. The
content of a pro forma invoice is almost identical to a commercial invoice and is
usually considered a binding agreement although the price may change before the
final sale. In the present case, the Opposition Division considers that these
documents are valid evidence of use, all the more so as these documents have been
signed by the customers. It must be also pointed out that the invoices are not all
marked as pro forma. Five commercial invoices directed to Polish customers and
dated within the deadline have been provided by the opponent.
As regards the nature of use, in particular in connection to the goods for which the
earlier mark is registered, it must be pointed out that trade marks are traditionally
used on goods (printed on the goods, on labels, etc.) or their packaging. However,
showing use on goods or their packaging is not the only way of proving use in
relation to goods. It is sufficient, if there is a proper connection between the mark and
the goods, for the mark to be used ‘in relation to’ the goods or services, such as on
brochures, flyers, stickers, signs inside places of sale, etc.
In the present case, the earlier mark appears at the top of the invoices, in articles and
in some photos of the goods. As regards the invoices, the Opposition Division cannot
determine if all the goods invoiced have been produced and sold by the opponent
Decision on Opposition No B 2 641 051 page: 5 of 13
under the mark . The fact that the earlier mark appears at the top of the
invoices could correspond to a situation where the opponent sells its own products
but could be at the same time a reseller of goods produced by third parties. In such a
case, the invoices would constitute evidence of retailing services of Class 35 which
are not protected by the earlier mark. Therefore, from the invoices only, it cannot be
determined if some or all of these goods were sold under the opponent’s mark and to
what extent. However, the opponent also provided articles of magazines and
evidence of an exhibition including photos of goods bearing the earlier mark. These
goods are essentially wireless devices, outdoor CPE, routers and IP Cameras.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in
accordance with its essential function, which is to guarantee the identity of the origin
of the goods or services for which it is registered, in order to create or preserve an
outlet for those goods or services. Genuine use does not include token use for the
sole purpose of preserving the rights conferred by the mark. Furthermore, the
condition of genuine use of the mark requires that the mark, as protected in the
relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax,
EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
The evidence shows that the mark has been used in accordance with its function and
as registered. Taking into account the evidence in its entirety, although the evidence
submitted by the opponent is not particularly extensive, it does reach the minimum
level necessary to establish genuine use of the earlier trade mark during the relevant
period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade
mark for all the goods covered by the earlier trade mark.
According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation
to only some of the goods or services for which it is registered it will, for the purposes
of the examination of the opposition, be deemed to be registered in respect only of
those goods or services.
According to case-law, when applying the abovementioned provision, the following
should be considered:
…if a trade mark has been registered for a category of goods or services
which is sufficiently broad for it to be possible to identify within it a
number of sub-categories capable of being viewed independently, proof
that the mark has been put to genuine use in relation to a part of those
goods or services affords protection, in opposition proceedings, only for
the sub-category or sub-categories to which the goods or services for
which the trade mark has actually been used belong. However, if a trade
mark has been registered for goods or services defined so precisely and
narrowly that it is not possible to make any significant sub-divisions within
the category concerned, then the proof of genuine use of the mark for the
goods or services necessarily covers the entire category for the purposes
of the opposition.
Although the principle of partial use operates to ensure that trade marks
which have not been used for a given category of goods are not rendered
unavailable, it must not, however, result in the proprietor of the earlier
trade mark being stripped of all protection for goods which, although not
Decision on Opposition No B 2 641 051 page: 6 of 13
strictly identical to those in respect of which he has succeeded in proving
genuine use, are not in essence different from them and belong to a
single group which cannot be divided other than in an arbitrary manner.
The Court observes in that regard that in practice it is impossible for the
proprietor of a trade mark to prove that the mark has been used for all
conceivable variations of the goods concerned by the registration.
Consequently, the concept of ‘part of the goods or services’ cannot be
taken to mean all the commercial variations of similar goods or services
but merely goods or services which are sufficiently distinct to constitute
coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 45 and 46).
In the present case, the evidence proves use, on the one hand, for IP Cameras and,
on the other hand, for wireless transmitters of electronic signals, namely outdoor
CPE and routers. These goods can be considered to form objective subcategories of
cameras (photography) and transmitters of electronic signals. Therefore, the
Opposition Division considers that the evidence shows genuine use of the trade mark
only for IP Cameras and wireless transmitters of electronic signals.
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.
a)The goods
The goods on which the opposition is based are the following:
Class 9: IP cameras; wireless transmitters of electronic signals.
The contested goods are the following:
Class 9: Smartphones; display for smart phones; mobile phones; wearable
smart phone; wireless headsets; headsets; wireless headset for cellphones; wireless
headsets for smartphones; digital set top boxes; leather case for mobile phones;
leather case for smart phones; flip cover for mobile phones; flip covers for smart
phones; computer application software; computer application software for mobile
phones; computer application software for TV; tablet PC; monitor for computers;
monitors for commercial purposes; wearable computers; computers; printers for use
with computers; light emitting diode (LED) displays; leather case for tablet PC; flip
cover for tablet PC; portable computers; chargeable batteries; battery compensation
chargers; network surveillance cameras; television receivers; display for television
receivers; 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; earphones;
Decision on Opposition No B 2 641 051 page: 7 of 13
DVD players; handheld media players; speakers; digital cameras; wireless cameras;
3D spectacles; virtual reality game software; wearable telecommunication devices for
the wireless receipt, storage and/or transmission of data and messages; head
mounted video display; 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; wearable digital electronic devices
comprised primarily of a wristwatch and also featuring a telephone, software and
display screens for viewing, sending and receiving texts, emails, data and
information from smart phones, tablet computers and portable computers.
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.
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 network surveillance cameras; digital cameras; wireless cameras
include, as broader categories of, or overlap with, the opponent’s IP cameras. 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 computer application software; computer application software for
mobile phones; computer application software for TV may have some connection
with the opponent’s IP cameras. Indeed, devices such as mobile phones or
televisions may be connected to IP cameras through specific software for
surveillance. These goods are complementary and directed at the same consumers.
They may also share the same distribution channels. These goods are similar.
The contested digital set top boxes is an information appliance device that generally
contains a TV-tuner input and displays output to a television set and an external
source of signal, turning the source signal into content in a form that can then be
displayed on the television screen or other display device. It allows simultaneous
access to television broadcast and internet applications. The contested television
receivers are devices that combine a tuner, display, and loudspeakers for the
purpose of viewing television. These goods have some connections with the
opponent’s wireless transmitters of electronic signals. Indeed, these goods are
complementary and may coincide in end users and distribution channels. Therefore,
they are similar.
The contested tablet PC; monitor for computers; monitors for commercial purposes;
wearable computers; computers; printers for use with computers; light emitting diode
(LED) displays; portable computers; watchbands that communicate data to personal
digital assistants, smart phones, tablet computers, and personal computers through
Decision on Opposition No B 2 641 051 page: 8 of 13
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; wearable digital
electronic devices comprised primarily of a wristwatch and also featuring a
telephone, software and display screens for viewing, sending and receiving texts,
emails, data and information from smart phones, tablet computers and portable
computers are data processing equipment and peripherals adapted for use with
computers. The opponent’s IP cameras can send and receive data via a computer
network and the Internet. These goods are complementary or, at least, may coincide
in producers, end users and distribution channels. Therefore, they are similar.
The contested display for television receivers; wearable telecommunication devices
for the wireless receipt, storage and/or transmission of data and messages are
similar to wireless transmitters of electronic signals. These goods have a similar
nature and they may coincide in producers, end users and distribution channels.
The contested smartphones; mobile phones; wearable smart phone are pointtopoint
communications equipment. Smartphones are handheld personal computer with a
mobile operating system and an integrated mobile broadband cellular network
connection for voice, SMS, and Internet data communication; most if not all
smartphones also support Wi-Fi. It must be noted that the contested mobile phones
include the smartphones. The opponent’s IP cameras are a type of digital video
camera commonly employed for surveillance which can send and receive data via a
computer network and the Internet. Although most cameras that do this are
webcams, the term ‘IP camera’ or ‘netcam’ is usually applied only to those used for
surveillance. These goods are display devices that share similar technologies such
as wireless communications, they can be used together and share the same
distribution channels. It is not unusual that producers of smartphones also produce IP
cameras: at least, consumers may think that the commercial origin coincide. IP
cameras are provided with software for smartphones to access a live view of their
remote security cameras. Therefore, these devices may be used together for the
same purpose of surveillance of a place. These goods are similar to a low degree.
The contested wireless headsets; headsets; wireless headset for cellphones;
wireless headsets for smartphones; 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; earphones; DVD players; handheld media players; speakers and the
opponent’s IP cameras. They are all devices for the recording/transmission and/or
reproduction of sound and/or images and they may also coincide in producers and in
distribution channels. These goods are similar to a low degree.
The contested display for smart phones have no connection with the opponent’s
wireless transmitters of electronic signals and may coincide in producers with the
opponent’s IP cameras. However, all these goods have different nature, purpose and
method of use. They do not coincide in distribution channels. They are neither
complementary nor in competition. Therefore, these goods are dissimilar.
The contested leather case for mobile phones; leather case for smart phones; flip
cover for mobile phones; flip covers for smart phones; leather case for tablet PC; flip
cover for tablet PC are accessories for mobile phones and for tablet PC. They have
no connection with the opponent’s wireless transmitters of electronic signals and IP
cameras. They have different nature, purpose and method of use. They do not
Decision on Opposition No B 2 641 051 page: 9 of 13
coincide in distribution channels. They are neither complementary nor in competition.
Therefore, these goods are dissimilar.
The contested chargeable batteries are devices consisting of one or more
electrochemical cells. The contested battery compensation chargers are devices
used to put energy into a secondary cell or rechargeable battery by forcing an electric
current through it. These goods have no sufficient connection with the opponent’s
goods. Although the latter may need the former for its functioning, this is not sufficient
to find a similarity between them. They have different nature, purpose and method of
use. The public will not perceive that the commercial origin is the same. These goods
are neither complementary nor in competition. Therefore, they are dissimilar.
The contested 3D spectacles; virtual reality game software; head mounted video
display are specific goods that have no sufficient connection with the opponent’s
goods. They have different nature, purpose and method of use. The public will not
perceive that the commercial origin is the same. These goods are neither
complementary nor in competition. Therefore, they are dissimilar.
Contested goods in Class 14
The contested goods are clocks, watches and their parts and fittings. Although some
of these goods may incorporate cameras and may be connected to wireless
transmitters of electronic signals, such as routers, their nature, destination and
method of use is different from those of the opponent’s IP Cameras and wireless
transmitters of electronic signals. These goods do not coincide in producers and
distribution channels. They are neither complementary nor in competition. These
goods are dissimilar.
b)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 to different degrees are
directed at 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.
c)The signs
Air Live
Earlier trade mark Contested sign
Decision on Opposition No B 2 641 051 page: 10 of 13
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 word ‘Air’ of both signs exists as such in English or in French with the common
meaning of the mixture of gases that surrounds the earth and that we breathe. In
English, this word, in association with the common element ‘Live’, may also refer to
‘the medium through which radio waves are transmitted’ or ‘to broadcast something’.
Indeed, the other English word ‘Live’ means ‘broadcast as it happens; performing or
being performed in front of an audience’ (Extracted on 30/10/2017 from the
Cambridge Dictionary online, https://dictionary.cambridge.org/dictionary/english).
These words describes some characteristics of, at least, some of the goods at hand,
for example their capacity to transmit signals through the air allowing consumers to
benefit from the advantages of ‘live’ full coverage streaming. Therefore, these words
have a low distinctive character for part of these goods and for, at least, the
Englishspeaking part of the relevant public.
The same occurs with the three arc-shaped lines above the letter ‘A’ in the earlier
mark which appear to depict a signal transmission. Therefore, for the reason already
explained above for the word ‘Air’, this element has also a low distinctive character.
Some parts of the relevant public, such as the Spanish-, Italian- or Portuguese-
speaking consumers, may also associate the word ‘Air’ with ‘the medium through
which radio waves are transmitted’ because the equivalents in these languages are
relatively close (‘Aire’ in Spanish, ‘Aria’ in Italian and ‘Ar’ in Portuguese). On the other
hand, for some consumers, such as the Lithuanian, Latvian and Estonian consumers,
the words ‘Air’ and ‘Live’ are not meaningful and have therefore an average degree of
distinctiveness. Consequently, the Opposition Division finds it appropriate to focus
the comparison of the signs on the Lithuanian, Latvian and Estonian-speaking part of
the public.
The signs have no element that could be considered clearly more dominant than
other elements.
When signs consist of both verbal and figurative components, in principle, the verbal
component of the sign usually has a stronger impact on the consumer than the
figurative component. This is because the public does not tend to analyse signs and
will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
Visually and aurally, the signs coincide in all their verbal elements, namely ‘Air
Live’. As the figurative elements of the earlier mark are not subject to a phonetic
Decision on Opposition No B 2 641 051 page: 11 of 13
assessment, the signs are aurally identical. Visually, they differ in the three arc-
shaped lines and the typographic stylisation of the verbal elements of the earlier
mark. Taking into account that the figurative elements of the earlier mark have less
impact than its verbal elements, the signs are visually highly similar.
Conceptually, although the public in question will perceive in the earlier mark the
concept of a signal transmission in the three arc-shaped lines, since the contested
sign will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d)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
question. Therefore, the distinctiveness of the earlier mark must be seen as normal,
despite the presence of a/some weak element in the mark, as stated above in
section c) of this decision.
e)Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified (recital 11
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
The goods, found to be identical or similar to different degrees, are directed at the
public at large whose degree of attention may vary from average to high. The signs
are visually similar to a high degree and aurally identical. The signs are not
conceptually similar because the figurative element of the earlier mark has a concept
but this difference has little impact because it rests on a weak element. The
distinctiveness of the earlier mark must be seen as normal.
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). Therefore, in the present
case, the high degree of similarity between the signs offsets the low degree of
similarity for some goods.
Decision on Opposition No B 2 641 051 page: 12 of 13
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). 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).
Considering all the above, there is a likelihood of confusion on the part of the
Lithuanian, Latvian and Estonian-speaking part of the public. 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 4 026 597. It follows that the contested trade mark
must be rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some 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
Begoña URIARTE
VALIENTE
Benoit VLEMINCQ Martina GALLE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.
Decision on Opposition No B 2 641 051 page: 13 of 13