OPPOSITION No B 2 759 259

Medion AG, Am Zehnthof 77, 45307 Essen, Germany (opponent), represented by Becker & Müller, Turmstr. 22, 40878 Ratingen, Germany (professional representative)

a g a i n s t

Cinia Group Oy, Läkkisepäntie 23, 00620 Helsinki, Finland (applicant), represented by Cinia Group Oy, Minna Järvinen, Läkkisepäntie 23, 00620 Helsinki, Finland (employee representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 759 259 is upheld for all the contested goods and services, namely 

Class 9: Apparatus, instruments and cables for electricity; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Recorded content; Information technology and audiovisual equipment; Safety, security, protection and signalling devices.

Class 38:         Telecommunication services. 

Class 42:         IT services.

2.        European Union trade mark application No 15 480 791 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.  

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 480 791, namely against all the services in Class 38 and some of the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 4 585 295. The opponent invoked Article 8(1)(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 and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 9:         Magnetic encoders; magnetic data carriers; optical data media; data-processing apparatus; optical character readers; writing and/or reading implements (data processing); magnetic data carriers; mouse (data processing equipment); optical data carriers; disc exchangers (for computers); scanners [data processing equipment]; memories for data processing installations, processors (central processing units); compact discs (read-only memory); compact discs (audio-video); computers; recorded computer programs; computer software [recorded]; games programs for computers; computer operating programs (recorded); computer peripheral devices; computer programs (downloadable); computer keyboards; printers for use with computers; wrist rests for use with computers; interfaces [for computers]; laptops (computers); floppy disc drives; monitors for computers; monitors (computer hardware), navigation apparatus (computer programs) for vehicles (onboard computers); notebooks (computers); computer peripheral devices; computer programs; computer software (recorded); computer game programs; keyboards for computers; make-up removing appliances, electric; grids for electric accumulators, chargers for electric accumulators, plates for electric accumulators, electric accumulators; alarm bells, electric; connection boxes (electricity), display apparatus (electric); electronic display panels; batteries, electric; flat irons, electric; theft prevention installations, electric; electric wires; electrodynamic apparatus for the remote control of railway points; electric cables; electric capacitors; electromagnetic coils; electronic publications [downloadable]; electronic pens [visual display units]; discharge tubes, electric, other than for lighting; anti-interference devices (electricity); batteries, electric, for vehicles; electrodynamic signal remote control apparatus; photocopiers (photographic, electrostatic, thermic); inductance coils (electricity); electric devices for attracting and killing insects; wire connectors (electricity); door bells (electric); chargers for electric batteries; hair-curlers, electrically heated; welding apparatus, electric; soldering irons, electric; solenoid valves (electromagnetic switches); measuring devices, electric; electrically heated hair curlers; locks (electric); transmitters of electronic signals; electronic security tags for goods; socks, electrically heated; electronic pens (visual display units); buzzers electric; electronic pocket translators; electronic organisers; electric door bells; door openers, electric; door closers, electric; monitoring apparatus, electric; compact discs (audio-video); receivers (audio and video); tone arms for record players; head cleaning tapes [recording]; tone arms for record players; sound recording apparatus; tape-recorders; sound locating instruments; sound carriers; sound transmitting apparatus; sound amplifiers; sound-reproducing apparatus; amusement apparatus adapted for use with television receivers; temperature indicators; video telephones; loudspeaker boxes; letter scales; compact disc players; television apparatus; telephone apparatus; motion picture cameras; film cutting apparatus; radiotelephony sets; signalling bells; altimeters; cassette players; compasses; headphones; laser pointers (luminous pointers); microphones; mobile telephones; modems; navigational instruments; lenses (optics); mouse pads (mouse mats); plotters; projection apparatus; projection screens; slide projectors, radios; smartcards (cards with integrated circuits); video games adapted for use with television receivers only; walkie talkies; video cameras; video recorders; safety helmets for sports; none of the aforesaid goods being or featuring educational and/or entertainment content intended for general circulation; the aforementioned goods exclusive of board game programs for computers, computer board games and video board games for use with television receivers only, electronic board games, video board games for a connection to a television, board games software, cards/discs/tapes/wires/circuits for bearing or bearing board games and/or games software and/or arcade board games, board gaming machines including slot machines.

Class 42:         Computer programming; conversion of data or documents from physical to electronic media; hiring out data-processing equipment; recovery of computer data; updating of computer software; computer consultancy; copying of computer programs; updating of computer software; computer software design; rental of computer software; consultancy in the field of computers; recovery of computer data; installation of computer programs, maintenance of computer software; computer systems design; systems analysis; design of computer systems; computer software design; design of computer systems; installation of computer programs; conversion of computer programmes and data (other than physical alteration); copying of computer programs; computer software rental; maintenance of computer software; recovery of computer data; conversion of data or documents from physical to electronic media; design and maintenance of websites for third parties.

The contested goods and services are the following:

Class 9:         Apparatus, instruments and cables for electricity; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Recorded content; Information technology and audiovisual equipment; Safety, security, protection and signalling devices.

Class 38:         Telecommunication services. 

Class 42:         IT services.

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 apparatus, instruments and cables for electricity include, as a broad category, the opponent’s goods such as anti-interference devices (electricity), inductance coils (electricity) and electric cables.

The contested navigation, guidance, tracking, targeting and map making devices include or at least overlap with the opponent’s navigation apparatus (computer programs) for vehicles (onboard computers).

The broad category of the contested optical devices, enhancers and correctors includes the opponent’s optical data media, optical character readers and lenses (optics).

The broad category of the contested recorded content encompasses the opponent’s recorded computer programs.

The broad category of the contested information technology and audiovisual equipment includes the opponent’s computers and receivers (audio and video).  

The contested safety, protection devices include the opponent’s safety helmets for sports; the contested security devices include the opponent’s electronic security tags for goods and theft prevention installations, electric; the contested signalling devices include the opponent’s signalling bells.

Since the Opposition Division cannot dissect ex officio the abovementioned broad categories of the contested goods, they are considered identical to the corresponding more specific opponent’s goods.  

The limitations at the end of the specification of the opponent’s goods in Class 9 (‘none of the aforesaid goods being or featuring educational and/or entertainment content intended for general circulation; the aforementioned goods exclusive of board game programs for computers, computer board games and video board games for use with television receivers only, electronic board games, video board games for a connection to a television, board games software, cards/discs/tapes/wires/circuits for bearing or bearing board games and/or games software and/or arcade board games, board gaming machines including slot machines’) do not alter the outcome of the comparison of the goods made above, because the broad categories of the contested goods still encompass, or at least overlap with, the opponent’s goods limited in that way.  

Contested services in Class 38

The contested telecommunication services enable remote communication between people or computers, and provide access to various networks; they originate from telecommunication networks operators. The opponent’s services in Class 42, such as computer programming, are directly or potentially intended for enabling telecommunication activities, in terms of allowing access to data networks or connection between various devices, or serving as interface between the telecommunication equipment and the user. These services have therefore the same purpose. Moreover, the opponent’s services are indispensable for the functioning of telecommunication operations and therefore can be considered as complementary. Finally, they are distributed over the same channels and are usually offered under the control of the same entity. Therefore, they are similar.

Contested services in Class 42

The contested IT services are a broad category that encompasses the opponent’s services such as computer programming in Class 42. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the more specific opponent’s services.  

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise, for example in the IT field.

The degree of attention of the relevant public may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. For example, some of the relevant goods, such as IT equipment in Class 9, may be expensive and infrequent purchases and the level of attention for this kind of goods is above average.

3. The signs

LIFE	cLIFE
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for which the element ‘LIFE’ is meaningful.

The word ‘LIFE’ is the only component of the earlier mark and will be understood as ‘the period between birth and dead, or the experience or state of being alive’  (information extracted from Cambridge Dictionary on 20/06/2017 at http://dictionary.cambridge.org/dictionary/english/life?a=british). As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

Although the contested sign, ‘cLIFE’, has no meaning as a whole, the English-speaking public will perceive it as a juxtaposition of the letter ‘c’, without any particular meaning in relation to the relevant goods and services, and the word ‘LIFE’, defined above. Therefore, both components of the contested sign have an average degree of inherent distinctiveness for the relevant goods and services.

Since the element ‘LIFE’, included in both signs, will be associated with the meaning explained above, the signs are conceptually highly similar.  

Visually and aurally, the signs coincide in the letters ‘LIFE’ and their sounds. They differ in the letter ‘c’, and its sound, at the beginning of the contested sign. Therefore, the signs are visually and aurally highly similar as well.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are identical, and the services have been found partially identical and partially similar. They are directed at the public at large and at business customers. The degree of attention of the relevant public will vary between average and high.

The signs are visually, aurally and conceptually highly similar to the extent that they have the word ‘LIFE’ in common. The additional letter ‘c’, even though placed at the beginning of the contested sign, is not sufficient to counteract these overwhelming similarities.

Moreover, 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). This is true even for consumers who pay a high degree of attention (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, and taking into account that the earlier mark has a normal degree of distinctiveness, there is a likelihood of confusion on the part of the English-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 4 585 295. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Cynthia DEN DEKKER

Zuzanna STOJKOWICZ

Ioana MOISESCU

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.