OPPOSITION No B 2 496 332

Red.com, Inc., 34 Parker, Irvine, California 92618, United States of America (opponent), represented by Bardehle Pagenberg, 10, boulevard Haussmann, 75009 Paris, France (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 Novagraaf France, Bâtiment O2 – 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur–Seine, France (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 496 332 is partially upheld, namely for the following contested goods:

Class 9:        Portable hard disk drives; universal serial bus hardware drives; portable chargers for digital camera batteries; integrated circuits; computer software for education; electronic downloadable publications in the nature of magazines, newspapers, books, manuals in the field of electronics.

2.        European Union trade mark application No 12 993 771 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 993 771. The opposition is based on European Union trade mark registration No 9 429 168. 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

The goods on which the opposition is based are the following:

Class 9:        Digital cinema camera systems, sold individually or as a unit, comprised of, cameras, digital sensors, camera lenses, flash memory cards, electronic memories, hard drives for video recorders, video monitors and flat panel display screens, all for use in the creation, storage, delivery, manipulation, recording, playback or viewing of video and photos consisting of a range of intensity levels of luminance and contrast between the lightest and darkest areas of an image; digital cinema camera systems for merging multiple images to create a final still or motion image containing a range of intensity levels of luminance and contrast between the lightest and darkest areas of the image; software for digital camera systems merging multiple images to create a final still or motion image containing a range of intensity levels of luminance and contrast between the lightest and darkest areas of the image; computer software for the editing, manipulation, and integration multiple digital still or motion images to create a final still or motion image containing a range of intensity levels of luminance and contrast between the lightest and darkest areas of the image.

The contested goods are the following:

Class 9:        Portable hard disk drives; mouses for computers; universal serial bus hardware drives; television remote controllers; portable chargers for mobile phone batteries and digital camera batteries; computer application software for home appliances; computer application software for refrigerators; computer application software for clothes washing machines; computer application software for vacuum cleaners; computer application software for dish washers; computer application software for ovens; computer application software for microwave ovens; computer application software for clothes management machines; computer application software for air purifiers; computer application software for water purifiers; integrated circuits; electronic toll collection systems; transponders, namely, electronic terminals equipped in vehicles for electronic commercial transactions; computer software for education; electronic downloadable publications in the nature of magazines, newspapers, books, manuals in the field of electronics.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Furthermore, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested computer software for education could be software elaborated in any possible area for the purposes of teaching or self-learning. This could also be in the very specific areas of the opponent´s computer software for the editing, manipulation, and integration multiple digital still or motion images to create a final still or motion image containing a range of intensity levels of luminance and contrast between the lightest and darkest areas of the image. Therefore, there is an overlap between the goods in comparison. It follows that these are identical.

The contested portable hard disk drives; universal serial bus hardware drives are used nowadays as portable backup drives and storage information devices. These overlap with the opponent’s hard drives for video recorders, all for use in the creation, storage, delivery, manipulation, recording, playback or viewing of video and photos consisting of a range of intensity levels of luminance and contrast between the lightest and darkest areas of an image, which are hard drives for the specific purpose of operating with photos and video. The goods are considered identical.

The contested integrated circuits are set of electronic circuits, which inter alia, could be used as memory chips. These, therefore, overlap with the opponent’s electronic memories, all for use in the creation, storage, delivery, manipulation, recording, playback or viewing of video and photos consisting of a range of intensity levels of luminance and contrast between the lightest and darkest areas of an image. The goods are considered identical.

The contested portable chargers for digital camera batteries include easily movable chargers for all kinds of digital cameras. The contested goods show a link with the opponent’s digital cinema camera systems, sold individually or as a unit, comprised of, cameras, digital sensors, camera lenses, flash memory cards, electronic memories, hard drives for video recorders, video monitors and flat panel display screens, all for use in the creation, storage, delivery, manipulation, recording, playback or viewing of video and photos consisting of a range of intensity levels of luminance and contrast between the lightest and darkest areas of an image. Even though the goods of the opponent are specific digital camera systems, it is likely that at least the camera of the entire system would require a battery charger. The producer of the opponent´s goods would usually produce the contested ones as well. The contested goods could come in the same package with the opponent’s goods, but could also be bought separately. There is a complementarity between the goods in comparison and they coincide in end user and distribution channels. It follows that these are similar.

The contested electronic downloadable publications in the nature of magazines, newspapers, books, manuals in the field of electronics are electronic versions of traditional media, like e-books, online magazines, online newspapers, online manuals. It is becoming common to distribute books, magazines and newspapers to consumers through tablet reading devices by means of so-called ‘apps’ (application software) in the form of electronic publications. Even though this would not be the function and intended purpose of the opponent´s computer software for the editing, manipulation, and integration multiple digital still or motion images to create a final still or motion image containing a range of intensity levels of luminance and contrast between the lightest and darkest areas of the image, the goods in comparison can still coincide in their producer, as nowadays varieties of software and electronic downloadable publications are offered by the same producer. Furthermore, the contested goods, being in the field of electronics, could also have the same subject as the opponent’s goods, namely manipulation of digital images, or could even be on the subject of software for digital image manipulation. The goods can coincide in their end user and distribution channels. It follows that these are similar to a low degree.

The contested computer application software for home appliances; computer application software for refrigerators; computer application software for clothes washing machines; computer application software for vacuum cleaners; computer application software for dish washers; computer application software for ovens; computer application software for microwave ovens; computer application software for clothes management machines; computer application software for air purifiers; computer application software for water purifiers are not similar to any of the opponent’s goods. Even though some of the opponent’s goods are also computer software (e.g. computer software for the editing, manipulation, and integration multiple digital still or motion images to create a final still or motion image containing a range of intensity levels of luminance and contrast between the lightest and darkest areas of the image), the goods in comparison would not usually be directed towards the same end user. The applicant’s goods are aimed at the actual manufacturer of the devices (e.g. refrigerators and vacuum cleaners) for which this software is meant. The software is then used by the manufacturer of these devices in order to be implemented in the final product, namely the vacuum cleaner, the refrigerator, etc. The opponent’s software goods are not necessarily purchased with the device, as they would not be usually integrated in a computer or a digital camera. They are generally meant for image manipulation, which is nowadays done by a lot of end users of computers and digital cameras, either professional photographers or consumers with a hobby in photography. On the other hand, the appliances, for which the applicant’s software goods are meant, are generally not designed to allow the end customers to change the software and the underlying operating system, or to flexibly reconfigure the hardware. Furthermore, the goods in comparison would normally require a different expertise to be developed and they are usually distributed through different distribution channels. There is no similarity between the contested goods and the rest of the opponent´s goods either. They do not coincide in nature, purpose or method of use. Furthermore, they are neither complementary, nor in competition. It follows that the contested goods are dissimilar to the opponent’s ones.

The contested mouses for computers; television remote controllers; portable chargers for mobile phone batteries are parts and accessories that are used for goods (such as computers, television sets) different from the opponent´s goods. Even if they could be found in the same distribution channels like some of the opponent´s goods, this is not enough for finding similarity. Furthermore, the goods in comparison are neither complementary, nor in competition. They have different purposes and different methods of use. The end user would not expect them to originate from one and the same enterprise. It follows that these goods are dissimilar.

The contested electronic toll collection systems; transponders, namely, electronic terminals equipped in vehicles for electronic commercial transactions have nothing in common with the opponent´s goods. These are specific systems for performing certain commercial transactions. They do not coincide in producer, end user or distribution channels. They are neither complementary nor in competition with the opponent´s goods. Furthermore, they do not coincide in nature, method of use or purpose. It follows that these are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to different degrees are directed at the public at large, but also at professionals, such as those in the area of photography and/or film-making. The degree of attention may vary from average to higher than average depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

                      HDRX                                          hdr

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).

Both signs are word marks, the earlier one consists of the element ´HDRX´ and the contested one of the element ´hdr´. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial.

The element ´hdr´ of the contested sign would be perceived by part of the relevant public, usually the one that is specialized in photography in the following way: ´High dynamic range (HDR) is a photography term that describes media applications such as digital imaging and digital audio production. The HDR feature is capable of producing a higher dynamic range than the status quo´ (information extracted from http://encyclopedia.thefreedictionary.com/High+Dynamic+Range). It is further noted that the same part of the public may also recognize the abbreviation and its meaning in the earlier mark as well, as it is completely contained in it, with one additional letter ‘X’ in the end. Therefore, for part of the relevant public the element ‘hdr’ in the contested sign as well as the sequence ‘HDR’ in the earlier mark would allude to the characteristics (or the purpose) of some of the relevant goods (e.g. computer software for the editing, manipulation, and integration multiple digital still or motion images to create a final still or motion image containing a range of intensity levels of luminance and contrast between the lightest and darkest areas of the image in Class 9 of the earlier mark and computer software for education in Class 9 of the contested sign). It follows that the distinctiveness of the element (sequence) ‘hdr’/‘HDR’ would be weaker than average for these goods and this part of the relevant public.

However, for part of the relevant public, such as the one non-specialized in photography, the abbreviation ´HDR´ will carry no meaning for the relevant goods and it will therefore be distinctive. This would also be applicable for the opponent’s and the contested software goods, found to be identical, as they overlap in being for educational purpose, and thus could be purchased by the end consumer who is not familiar with the specialized term.  

According to the case law, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, considering that the similarities between the signs will be higher to the extent that a significant part of the public (e.g. the one being non-specialized in photography) does not perceive any meaning in the term ‘HDR’ (and it is distinctive), for reasons of economy of proceedings the Opposition Division will focus its examination on this part of the public.

It follows that, the terms ‘HDRX’ of the earlier mark and ‘hdr’ of the contested sign have no meaning for the relevant part of the public and are, therefore, distinctive.

Visually and aurally, the signs coincide in the sequence (and the sound) of the letters ‘HDR’, presenting the first three out of four letters in the earlier mark and all the letters of the contested sign. They differ in the last letter (and the sound of the letter) ´X´ of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the relevant part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the relevant part of the public on which the assessment is focused. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

As has been concluded above, the contested goods were found partly identical, partly similar to different degrees and partly dissimilar to those of the earlier mark. The degree of attention may vary from average to higher than average when choosing the relevant goods.

It is taken into account that, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness for the relevant part of the public. It has been also established above that the signs are visually and aurally highly similar, due to the sequence of letters ‘hdr’, forming the entire contested sign and almost the entire earlier mark.

It is, furthermore, noted that 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). In the present case, the high visual and aural similarity between the signs offsets any lesser degree of similarity between some of the goods at issue.

In the light of the foregoing, also taking into account the principle of interdependence mentioned above, the degree of similarity between the marks is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the goods found to be identical and similar to different degrees originate from the same undertaking or economically linked undertakings, even when the degree of attention is higher than average.

Considering all the above, there is a likelihood of confusion on the part of the public that would not understand a meaning in the term ‘HDR’ and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, including to a low degree to those of the earlier trade mark (due to the sufficient level of similarity between the marks).

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Plamen IVANOV

Irina SOTIROVA

Erkki MÜNTER

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.