OPPOSITION No B 2 686 551

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

Penta Solutions S.L., c/ Ganduxer, 127 Planta 2, Puerta B, 08022 Barcelona, Spain (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).

On 17/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 686 551 is partially upheld, for the following contested goods:

Class 09:        Photographic, cinematographic, optical, apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers; Compact discs, DVDs and other digital recording media; Calculators; Data processing equipment; Computers; Computer software; Connections for electric lines; Couplers [data processing equipment]; Batteries, electric; Electronic agendas; Surveying instruments; Alarms; Burglar alarms; Fire alarms; Sound alarms; Mouse mats; Loudspeakers; Amplifiers; Testing apparatus not for medical purposes; Antennas; Theft prevention installations, electric; Global Positioning System [GPS] apparatus; Data processing apparatus; Downloadable image files; Downloadable music files; Distribution boxes [electricity]; Audiovisual teaching apparatus; Ear phones; Telephone receivers; Batteries for lighting; Bags adapted for laptops; Flashlamps for cameras; Wire connectors [electricity]; Terminals [electricity]; Tone arms for record players; Coaxial cables; Fiber optic cables; Electric cables; Automated teller machines [ATM]; Calculators; Pocket calculators; Cinematographic apparatus; Cameras; Juke boxes for computers; Battery chargers; Chargers for electric batteries; Spools [photography]; Video game cartridges; Video cassettes; Batteries, electric; Integrated circuit chips; Cinematographic film (Apparatus for editing -); Magnetic tapes; Sound recording strips; Head cleaning tapes [recording]; Printed circuits; Integrated circuits; Magnetic encoders; Laptop computers; Connectors [electricity]; Distribution consoles [electricity]; Contacts, electric; Answering machines; Regulating apparatus, electric; Remote control apparatus; Cell phone straps; Chronographs [time recording apparatus]; Milage recorders for vehicles; Light-emitting diodes [LED]; Discs (Compact -) [audio-video]; Disks, magnetic; Optical discs; Cd roms; Floppy discs; Transmitting sets [telecommunication]; Electric couplings; Plugs, sockets and other contacts [electric connections]; Scanners [data processing equipment]; Racks (Photographic -); Cases especially made for photographic apparatus and instruments; Fax devices; Optical fibers; Camera filters; Photocopiers; Sleeves for laptops; Apparatus for recording sound; Sound recording carriers; Video recorders; Electric wires; Magnetic wires; Telephone wires; Printers for computers; Speed indicators; Intercommunication apparatus; Interfaces for computers; Switches, electric; Hands free kits for phones; Electronic pens; Cassette players; Compact disc players; DVD players; Readers [data processing equipment]; Optical character readers; Optical lenses; Close-up lenses; Tape recorders; Junction sleeves for electric cables; Digital photo frames; Computer memory devices; USB flash drives; Microphones; Microprocessors; Modems; Monitors [computer hardware]; Monitors [computer programs]; Satellite navigational apparatus; Navigational instruments; Objectives [lenses] [optics]; Shutters [photography]; Optical apparatus and instruments; Computers; Portable computers; Horns for loudspeakers; Projection screens; Video screens; Peripherals adapted for use with computers; Stands for photographic apparatus; Batteries, electric; Batteries, electric; Solar batteries; Planimeters; Plotters; Central processing units; Computer operating programs, recorded; Recorded computer programs; Programs (Computer -) [downloadable software]; Projection apparatus; Encoded identification bracelets, magnetic; Electronic wristbands; Radios; Vehicle radios; Radio pagers; Radiotelephony sets; Walkie-talkies; Radiotelegraphy sets; Mouse [computer peripheral]; Audiovisual receivers; Time recording apparatus; Wrist rests for use with computers; Apparatus for the reproduction of sound; Personal stereos; Portable media players; Games software; Recorded computer software; Sounding apparatus and machines; Apparatus for the transmission of sound; Magnetic data carriers; Optical data carriers; Electronic notice boards; Smart cards; Computer keyboards; Telephones; Telephone transmitters; Cell phones; TV sets; Record players; Downloadable ring tones for mobile phones; Electronic pocket translators; Camera tripods; Magnetic tape units for computers; Disk drives for computers; Camcorders; Videotapes; Video telephones; Viewfinders, photographic.

Class 10:        Diagnostic apparatus for medical purposes; Electrocardiographs; Medical apparatus and instruments; Pulsemeters; Sphygmomano- meters; Thermometers for medical purposes.

Class 11:                Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Oil burners; Acetylene flares; Heat accumulators; Steam accumulators; Lighting installations for air vehicles; Hot air ovens; Heating installations [water]; Filters for air conditioning; Air deodorising apparatus; Air purifying apparatus and machines; Hot air apparatus; Hot air bath fittings; Air cooling apparatus; Air sterilisers; Air filtering installations; Ionization apparatus for the treatment of air or water; Electrically heated carpets; Feeding apparatus for heating boilers; Pads [cushions] (Heating -), electric, not for medical purposes; Lighting apparatus and installations; Cooking rings; Anti-glare devices for automobiles [lamp fittings]; Anti-glare devices for vehicles [lamp fittings]; Flares; Torches for lighting; Flare stacks for use in the oil industry; Apparatus for dehydrating food waste; Beverage cooling apparatus; Brackets for gas burners; Chandeliers; Oven fittings made of fireclay; Refrigerating cabinets; Framework of metal for ovens; Rotisseries; Roasting jacks; Electric autoclaves; Automobile headlamps; Barbecues; Firebars; Bicycle lights; Hot water bottles; Disposable sterilization pouches; Heat pumps; Lightbulbs; Light bulbs for directional signals for vehicles; Lightbulbs; Lamps for directional signals of automobiles; Electric coffee percolators; Electric coffeepots; Boilers, other than parts of machines; Heating boilers; Laundry room boilers; Heating apparatus, electric; Heating apparatus for solid, liquid or gaseous fuels; Central heating radiators; Heating installations; Aquarium heaters; Heaters for vehicles; Water heaters; Water heaters [apparatus]; Pocket warmers; Bed warmers; Immersion heaters; Heaters for heating irons; Heaters for baths; Heaters, electric, for feeding bottles; Bed warmers; Footwarmers, electric or non-electric; Plate warmers; Apparatus for heating; Cold storage rooms; Tanning apparatus [sun beds]; Ventilation hoods; Ventilation hoods for laboratories; Exhaust hoods for kitchens; Carbon for arc lamps; Sockets for electric lights; Fireplaces; Bicycle lights; Air conditioning apparatus; Air conditioning installations; Air conditioners for vehicles; Cooking apparatus and installations; Kilns; Cookers; Glue-heating appliances; Solar thermal collectors [heating]; Gas condensers, other than parts of machines; Regulating and safety accessories for gas pipes; Freezers; Lamp glasses; Expansion tanks for central heating installations; Gas cleaners and purifiers; Defrosters for vehicles; Heating apparatus for defrosting windows of vehicles; Heating elements; Igniters; Friction lighters for igniting gas; Gas lighters; Cooling installations for tobacco; Refrigerating appliances and installations; Refrigerating appliances and installations; Cooling installations for liquids; Roasting spits; Sterilisers; Stoves; Stoves; Evaporators; Standard lamps; Lanterns for lighting; Vehicle headlamps; Filaments for electric lamps; Magnesium filaments for lighting; Heating filaments, electric; Electric coffee filters; Filters [parts of household or industrial installations]; Footmuffs, electrically heated; Electric deep fryers; Refrigerators; Refrigerating appliances and installations; Fruit roasters; Regulating and safety accessories for gas apparatus; Gas boilers; Acetylene generators; Steam boilers, other than parts of machines; Lamp globes; Waffle irons, electric; Electric kettles; Ice machines and apparatus; Fireplaces; Microwave ovens; Microwave ovens for industrial purposes; Bread baking machines; Dental ovens; Kitchen ranges; Fittings, shaped, for ovens; Chimney flues; Flues for heating boilers; Humidifiers for central heating radiators; Light-emitting diodes [LED] lighting apparatus; Lighting apparatus for vehicles; Incinerators; Water cooling installations; Heat exchangers, not parts of machines; Lamps; Oil lamps; Arc lamps; Diving lights; Gas lamps; Laboratory lamps; Safety lamps; Electric lamps; Germicidal lamps for purifying air; Projector lamps; Curling lamps; Fairy lights for festive decoration; Milk cooling installations; Pocket searchlights; Lights, electric, for Christmas trees; Automobile lights; Aquarium lights; Vehicle lights; Malt roasters; Lamp casings; Blankets, electric, not for medical purposes; Acetylene burners; Alcohol burners; Gas burners; Incandescent burners; Burners for lamps; Petrol burners; Miners' lamps; Ice chests; Luminous house numbers; Electric pressure cooking saucepans; Oxyhydrogen burners; Bread baking machines; Baking ovens; Lamp shades; Roasting devices; Pasteurisers; Lava rocks for use in barbecue grills; Hotplates; Heating plates; Ceiling lights; Fabric steamers; Lampshade holders; Air valves for steam heating installations; Burners; Laboratory burners; Germicidal burners; Radiators [heating]; Radiators, electric; Ultraviolet ray lamps, not for medical purposes; Air heating apparatus; Refrigerating containers; Coolers for furnaces; Heat regenerators; Lamp reflectors; Reflectors for vehicles; Refrigerating appliances and installations; Dampers [heating]; Regulating accessories for water or gas apparatus and pipes; Drying apparatus and installations; Laundry dryers, electric; Drying installations; Driers (Air -); Hair driers [dryers]; Hand drying apparatus for washrooms; Safety accessories for water or gas apparatus and pipes; Coils [parts of distilling, heating or cooling installations]; Kiln furniture [supports]; Tobacco roasters; Radiator caps; Chimney blowers; Coffee roasters; Roasters; Toasters; Boiler pipes [tubes] for heating installations; Discharge tubes, electric, for lighting; Lamp chimneys; Luminous tubes for lighting; Electric cooking utensils; Level controlling valves in tanks; Valves (Thermostatic -) [parts of heating installations]; Steam generating installations; Steam facial apparatus [saunas]; Ventilation [air-conditioning] installations and apparatus; Ventilation [air-conditioning] installations for vehicles; Air conditioning fans; Fans (Electric -) for personal use; Fans [parts of air-conditioning installations]; Refrigerated display cases; Electric yoghurt makers.

2.        European Union trade mark application No 14 921 233 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 some of the goods of European Union trade mark application No 14 921 233, namely against some of the goods in Classes 9 and 10 and all of the goods in Class 11. 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 the following:

Class 07:        Tin openers (electric); electric generators; electric hammers; electric motors (not for land vehicles); fruit presses (electric) for household purposes; electromechanical apparatus for preparing beverages; electric hand drills; glue guns, electric; electric food processors; knives (electric); blenders, electric, for household purposes; electromechanical food preparation machines; machines and apparatus for polishing (electric); fruit presses, electric; machines and apparatus for cleaning (electric) for household purposes; electric beaters; electric shears; whisks, electric for household purposes; electric shoe polishers; machines and apparatus (electric) for carpet shampooing; food processors (electric); grinders/crushers (electric) for household purposes; coffee grinders (other than hand operated); mills for household purposes (other than hand-operated); knife grinders; vacuum cleaners; bags for use in vacuum cleaners; vacuum cleaner attachments for disseminating perfumes and disinfectants; washing machines; bread cutting machines.

Class 08:        Flat irons (non-electric); non-electrical tin openers; egg slicers (non-electric); irons (non-electric hand tools); depilation appliances (electric and non-electric); hand implements for hair curling (non-electric); Depilation appliances, electric and non-electric; Hair clippers, electric and non-electric; cheese slicers (non-electric); manicure sets, electric; manicure sets; nail files, electric; fingernail polishers (electric or non-electric); nail clippers (electric or non-electric); pizza cutters (non-electric); razor cases; razors, electric and non-electric beard-clipping machines; gimlets (hand tools); milling cutters (hand tools); hand implements for hair curling (non-electric); hand tools (hand-operated).

Class 09:        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 10:        Electric acupuncture apparatus; electrodes for medical use; electrocardiographs; belts, electric, for medical purposes; heating cushions, electric, for medical purposes; thermoelectric compresses (surgery), thermal compresses (electric) for surgical purposes; electrical dental apparatus; aerosol dispensers for medical purposes; sphygmomanometers; hot air apparatus (therapeutic); lamps for medical purposes; massage apparatus.

Class 11:        Electric heaters for baby bottles; electric lights for Christmas trees; pressure cookers (autoclaves), electric; electrically heated carpets; discharge tubes, electric, for lighting; sockets for electric lights; baby bottle warmers (electric); electric deep fryers; footmuffs, electrically heated; footwarmers (electric or non-electric); electric light bulbs; filaments for electric lamps; heating filaments (electric); electric heating apparatus; yoghurt-makers, electric; coffee filters, electric; electric coffee percolators; electric coffee percolators; cooking utensils (electric); sockets for electric lamps; filaments for electric lamps; electric lamps; electric discharge tubes for lighting; electric fans for personal use;radiators, electric; electric pressure cookers; electrically heated carpets; waffle irons, electric; electric laundry dryers; kettles (electric); flashlights (torches); ice machines and apparatus; bicycle lights; freezers, refrigerators; air-conditioning apparatus; refrigerating containers; microwave apparatus (cooking apparatus), warming plates; stoves; torches.

Class 16:        Paper tapes and cards for the recording of computer programs; inking ribbons for computer printers; paper tapes and cards for the recording of computer programs; paper tapes and cards for recording computer programs; credit card printing apparatus, non-electric; pencil sharpeners (electric or non electric); pencil sharpeners (electric or non-electric); electrocardiograph paper; typewriters (electric or non-electric); pointers (non-electronic); non of the aforesaid goods being or featuring educational and/or entertainment content intended for general circulation.

Class 28:         Stationary exercise bicycles; body-building apparatus; discuses for sports; kites; skating boots with skates attached; remote controlled vehicles; model vehicles (miniature); badminton sets; paragliders; appliances for gymnastics; dumb-bells; inline skates; machines for physical exercises; skateboards; tables for indoor football.

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 are the following:

Class 09:        Photographic, cinematographic, optical, apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers; Compact discs, DVDs and other digital recording media; Calculators; Data processing equipment; Computers; Computer software; Connections for electric lines; Couplers [data processing equipment]; Batteries, electric; Electronic agendas; Surveying instruments; Alarms; Burglar alarms; Fire alarms; Sound alarms; Mouse mats; Loudspeakers; Amplifiers; Testing apparatus not for medical purposes; Antennas; Theft prevention installations, electric; Global Positioning System [GPS] apparatus; Data processing apparatus; Downloadable image files; Downloadable music files; Distribution boxes [electricity]; Audiovisual teaching apparatus; Ear phones; Telephone receivers; Batteries for lighting; Bags adapted for laptops; Flashlamps for cameras; Wire connectors [electricity]; Terminals [electricity]; Tone arms for record players; Coaxial cables; Fiber optic cables; Electric cables; Automated teller machines [ATM]; Calculators; Pocket calculators; Cinematographic apparatus; Cameras; Juke boxes for computers; Battery chargers; Chargers for electric batteries; Spools [photography]; Video game cartridges; Video cassettes; Batteries, electric; Integrated circuit chips; Cinematographic film (Apparatus for editing -); Magnetic tapes; Sound recording strips; Head cleaning tapes [recording]; Printed circuits; Integrated circuits; Magnetic encoders; Laptop computers; Connectors [electricity]; Distribution consoles [electricity]; Contacts, electric; Answering machines; Regulating apparatus, electric; Remote control apparatus; Cell phone straps; Chronographs [time recording apparatus]; Milage recorders for vehicles; Light-emitting diodes [LED]; Discs (Compact -) [audio-video]; Disks, magnetic; Optical discs; Cd roms; Floppy discs; Transmitting sets [telecommunication]; Electric couplings; Plugs, sockets and other contacts [electric connections]; Scanners [data processing equipment]; Racks (Photographic -); Cases especially made for photographic apparatus and instruments; Fax devices; Optical fibers; Camera filters; Photocopiers; Sleeves for laptops; Apparatus for recording sound; Sound recording carriers; Video recorders; Electric wires; Magnetic wires; Telephone wires; Printers for computers; Speed indicators; Intercommunication apparatus; Interfaces for computers; Switches, electric; Hands free kits for phones; Electronic pens; Cassette players; Compact disc players; DVD players; Readers [data processing equipment]; Optical character readers; Optical lenses; Close-up lenses; Tape recorders; Junction sleeves for electric cables; Digital photo frames; Computer memory devices; USB flash drives; Microphones; Microprocessors; Modems; Monitors [computer hardware]; Monitors [computer programs]; Satellite navigational apparatus; Navigational instruments; Objectives [lenses] [optics]; Shutters [photography]; Optical apparatus and instruments; Computers; Portable computers; Horns for loudspeakers; Projection screens; Video screens; Peripherals adapted for use with computers; Stands for photographic apparatus; Batteries, electric; Batteries, electric; Solar batteries; Planimeters; Plotters; Central processing units; Computer operating programs, recorded; Recorded computer programs; Programs (Computer -) [downloadable software]; Projection apparatus; Encoded identification bracelets, magnetic; Electronic wristbands; Radios; Vehicle radios; Radio pagers; Radiotelephony sets; Walkie-talkies; Radiotelegraphy sets; Mouse [computer peripheral]; Audiovisual receivers; Time recording apparatus; Wrist rests for use with computers; Apparatus for the reproduction of sound; Personal stereos; Portable media players; Games software; Recorded computer software; Sounding apparatus and machines; Apparatus for the transmission of sound; Magnetic data carriers; Optical data carriers; Electronic notice boards; Smart cards; Computer keyboards; Telephones; Telephone transmitters; Cell phones; TV sets; Record players; Downloadable ring tones for mobile phones; Electronic pocket translators; Camera tripods; Magnetic tape units for computers; Disk drives for computers; Camcorders; Videotapes; Video telephones; Viewfinders, photographic.

Class 10:        Diagnostic apparatus for medical purposes; Electrocardiographs; Medical apparatus and instruments; Pulsemeters; Sphygmomanometers; Thermometers for medical purposes.

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Watering installations, automatic; Oil-scrubbing apparatus; Oil burners; Acetylene flares; Heat accumulators; Steam accumulators; Lighting installations for air vehicles; Hot air ovens; Regulating and safety accessories for water apparatus; Water intake apparatus; Flushing apparatus; Water filtering apparatus; Water purifying apparatus and machines; Heating installations [water]; Water sterilizers; Water distribution installations; Water distribution installations; Water supply installations; Filters for drinking water; Filters for air conditioning; Air deodorising apparatus; Air purifying apparatus and machines; Hot air apparatus; Hot air bath fittings; Air cooling apparatus; Air sterilisers; Air filtering installations; Ionization apparatus for the treatment of air or water; Stills; Electrically heated carpets; Feeding apparatus for heating boilers; Pads [cushions] (Heating -), electric, not for medical purposes; Lighting apparatus and installations; Cooking rings; Anti-glare devices for automobiles [lamp fittings]; Anti-glare devices for vehicles [lamp fittings]; Flares; Torches for lighting; Flare stacks for use in the oil industry; Apparatus for dehydrating food waste; Water softening apparatus and installations; Beverage cooling apparatus; Brackets for gas burners; Chandeliers; Washers for water taps; Oven fittings made of fireclay; Refrigerating cabinets; Framework of metal for ovens; Rotisseries; Roasting jacks; Toilet seats; Drip irrigation emitters [irrigation fittings]; Electric autoclaves; Automobile headlamps; Bathtubs; Baths (Spa -) [vessels];

Hydromassage bath apparatus; Bath tubs for sitz baths; Bath plumbing fixtures; Bath fittings; Barbecues; Firebars; Bicycle lights; Bidets; Hydrants; Hot water bottles; Disposable sterilization pouches; Heat pumps; Lightbulbs; Light bulbs for directional signals for vehicles; Lightbulbs; Lamps for directional signals of automobiles; Shower stalls; Turkish bath cabinets, portable; Electric coffee percolators; Electric coffeepots; Boilers, other than parts of machines; Heating boilers; Laundry room boilers; Heating apparatus, electric; Heating apparatus for solid, liquid or gaseous fuels; Central heating radiators; Heating installations; Aquarium heaters; Heaters for vehicles; Water heaters; Water heaters [apparatus]; Pocket warmers; Bed warmers; Immersion heaters; Heaters for heating irons; Heaters for baths; Heaters, electric, for feeding bottles; Bed warmers; Footwarmers, electric or non-electric; Plate warmers; Apparatus for heating; Chambers (Clean -) [sanitarym installations]; Cold storage rooms; Tanning apparatus [sun beds]; Ventilation hoods; Ventilation hoods for laboratories; Exhaust hoods for kitchens; Water-pipes for sanitary installations; Carbon for arc lamps; Loading apparatus for furnaces; Sockets for electric lights; Ash pits for furnaces; Ash conveyor installations, automatic; Fireplaces; Whirlpool-jet apparatus; Bicycle lights; Air conditioning apparatus; Air conditioning installations; Air conditioners for vehicles; Swimming pool chlorinating apparatus; Cooking apparatus and installations; Kilns; Cookers; Glue-heating appliances; Solar thermal collectors [heating]; Distillation columns; Processing installations for fuel and nuclear moderating material; Gas condensers, other than parts of machines; Regulating and safety accessories for gas pipes; Freezers; Lamp glasses; Chromatography apparatus for industrial purposes; Pressure water tanks; Flushing tanks; Expansion tanks for central heating installations; Water purifying installations; Sewage purification installations; Gas cleaners and purifiers; Desalination plants; Defrosters for vehicles; Desiccating apparatus; Heating apparatus for defrosting windows of vehicles; Disinfectant apparatus; Deodorising apparatus, not for personal use; Distillation apparatus; Light diffusers; Disinfectant distributors for toilets; Showers; Fuel economisers; Heating elements; Igniters; Friction lighters for igniting gas; Gas lighters; Cooling installations for tobacco; Refrigerating appliances and installations; Refrigerating appliances and installations; Cooling installations for liquids; Roasting spits; Sterilisers; Stoves; Stoves; Evaporators; Standard lamps; Lanterns for lighting; Vehicle headlamps; Filaments for electric lamps; Magnesium filaments for lighting; Heating filaments, electric; Aquarium filtration apparatus; Electric coffee filters; Filters [parts of household or industrial installations]; Footmuffs, electrically heated; Forges, portable; Drying apparatus for fodder and forage; Sinks; Electric deep fryers; Refrigerators; Refrigerating appliances and installations; Fruit roasters; Fountains; Ornamental fountains; Fumigation apparatus, not for medical purposes; Regulating and safety accessories for gas apparatus; Gas boilers; Acetylene generators; Steam boilers, other than parts of machines; Lamp globes; Waffle irons, electric; Taps [faucets]; Mixer taps for water pipes; Electric kettles; Ice machines and apparatus; Fireplaces; Microwave ovens; Microwave ovens for industrial purposes; Bread baking machines; Dental ovens; Kitchen ranges; Fittings, shaped, for ovens; Furnaces, other than for laboratory use; Solar furnaces; Chimney flues; Flues for heating boilers; Humidifiers for central heating radiators; Light-emitting diodes [LED] lighting apparatus; Lighting apparatus for vehicles; Incinerators; Water closets; Water cooling installations; Heat exchangers, not parts of machines; Lamps; Oil lamps; Arc lamps; Diving lights; Gas lamps; Laboratory lamps; Safety lamps; Electric lamps; Germicidal lamps for purifying air; Projector lamps; Curling lamps; Fairy lights for festive decoration; Wash-hand basins [parts of sanitary installations]; Gas scrubbers [parts of gas installations]; Milk cooling installations; Pocket searchlights; Taps [cocks, spigots] faucets [Am.] for pipes; Lights, electric, for Christmas trees; Automobile lights; Aquarium lights; Vehicle lights; Malt roasters; Lamp casings; Blankets, electric, not for medical purposes; Acetylene burners; Alcohol burners; Gas burners; Incandescent burners; Burners for lamps; Petrol burners; Miners' lamps; Ice chests; Luminous house numbers; Electric pressure cooking saucepans; Oxyhydrogen burners; Bread baking machines; Baking ovens; Lamp shades; Roasting devices; Pasteurisers; Lava rocks for use in barbecue grills; Nuclear reactors; Hotplates; Heating plates; Ceiling lights; Fabric steamers; Polymerisation installations; Lampshade holders; Air valves for steam heating installations; Burners; Laboratory burners; Germicidal burners; Radiators [heating]; Radiators, electric; Ultraviolet ray lamps, not for medical purposes; Air heating apparatus; Refrigerating containers; Coolers for furnaces; Heat regenerators; Lamp reflectors; Reflectors for vehicles; Refrigerating appliances and installations; Dampers [heating]; Regulating accessories for water or gas apparatus and pipes; Toilets, portable; Bath linings; Watering machines for agricultural purposes; Anti-splash tap nozzles; Sanitary apparatus and installations; Sauna bath installations; Drying apparatus and installations; Laundry dryers, electric; Drying installations; Driers (Air -); Hair driers [dryers]; Hand drying apparatus for washrooms; Safety accessories for water or gas apparatus and pipes; Coils [parts of distilling, heating or cooling installations]; Kiln furniture [supports]; Tobacco roasters; Radiator caps; Toilet bowls; Chimney blowers; Refining towers for distillation; Coffee roasters; Roasters; Toasters; Boiler pipes [tubes] for heating installations; Discharge tubes, electric, for lighting; Lamp chimneys; Luminous tubes for lighting; Urinals [sanitary fixtures]; Electric cooking utensils; Level controlling valves in tanks; Valves (Thermostatic -) [parts of heating installations]; Steam generating installations; Steam facial apparatus [saunas]; Ventilation [air-conditioning] installations and apparatus; Ventilation [air-conditioning] installations for vehicles; Air conditioning fans; Fans (Electric -) for personal use; Fans [parts of air-conditioning installations]; Refrigerated display cases; Electric yoghurt makers.

As a preliminary remark, 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.

Contested goods in Class 9

Apparatus for recording, transmission or reproduction of sound; apparatus for the reproduction of sound; apparatus for the transmission of sound; optical character readers; objectives [lenses] [optics]; photocopiers; plotters; navigational instruments; projection apparatus; projection screens; magnetic data carriers; head cleaning; magnetic encoders; video recorders; data-processing apparatus; compact discs; cassette players; smart cards; computers; scanners [data processing equipment]; recorded computer programs; recorded computer software; modems; mouse mats; batteries, electric; chargers for electric batteries; electronic pens; electronic pocket translators; electric cables; electric wires; cell phones; ear phones; microphones; radios are identically contained in both lists of goods (including synonyms).

The contested apparatus for recording, transmission or reproduction of images include as a broader category the opponent’s video telephones. 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 sounding apparatus and machines include as broader categories the opponent’s sound transmitting apparatus. 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 personal stereos; portable media players are included in or overlap with the opponent’s sound-reproducing apparatus. Therefore they are identical.

The contested goods include different types of alarms such as burglar alarms and related goods such as theft prevention installations, electric which overlap with the opponent’s alarm bells, electric. Therefore they are identical.

The contested light-emitting diodes [LED] are semiconductor diodes which glow when a voltage is applied. They are similar to the opponent’s wire connectors (electricity). These goods are directed at the same relevant consumer and may share distribution channels. The producers may also coincide.

The contested photographic, cinematographic, optical apparatus and instruments; cameras; spools [photography]; racks (photographic -); flashlamps for cameras; cases especially made for photographic apparatus and instruments; cinematographic film (apparatus for editing -); optical lenses; optical apparatus and instruments; optical fibers; digital photo frames; shutters [photography]; stands for photographic apparatus; viewfinders, photographic. close-up lenses; camera filters; camera tripods; camcorders are at least similar to the opponent’s lenses (optics). These goods are all related to photography and are directed at the same end user and share distribution channels. In addition they may be made by the same producers.

The contested goods include measuring instruments such as planimeters and speed indicators which are at least similar to the opponent’s altimeters. The purpose of these goods is similar, that is to measure. They may come from the same producers and share distribution channels.

The following contested goods are at least similar to the opponent’s goods because they may share relevant public and distribution channels, are usually directed at the same target audience and may come from the same producers:

The contested goods include data carriers such as optical data carriers and magnetic tapes which are at least similar to the opponent’s magnetic data carriers.

The contested goods include different kinds of data processing equipment such as automated teller machines [ATM] and laptop computers and peripherals adapted for use with computers such as computer keyboards and other related goods such as software which are at least similar to the opponent’s data processing apparatus.

The contested goods include downloadable files such as downloadable image files which are at least similar to the opponent’s electronic publications [downloadable].

The contested goods include different types of batteries such as solar batteries and related goods such as battery chargers which are at least similar to the opponent’s batteries, electric.

The contested goods include electrical and electronic components such as connectors [electricity] and electric couplings and related items such as junction sleeves for electric cables which are at least similar to the opponent’s wire connectors (electricity).

The contested goods include telephones and other point to point communication devices such as fax devices and related accessories such as ear phones which are at least similar to the opponent’s mobile phones.

The contested goods include TV sets, vehicle radios and other broadcasting related goods such as radios pagers which are at least similar to the opponent’s radios.

Contested goods in Class 10

Electrocardiographs; sphygmomanometers are identically contained in both lists of goods.

The contested medical apparatus and instruments, include as a broader category the opponent’s thermal compresses (electric) for surgical purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested diagnostic apparatus for medical purposes include as a broader category the opponent’s electrocardiographs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pulse meters; thermometers for medical purposes are similar to the opponent’s electrocardiographs. They have a broadly similar purpose as they are used to measure the patient’s pulse or heartbeat. In addition they may share the same producer, distribution channels and are directed at the same consumers. 

Contested goods in Class 11

Fans (electric -) for personal use; torches for lighting; bicycle lights; lightbulbs; sockets for electric lights; filaments for electric lamps; electric lamps; lights, electric, for christmas trees; discharge tubes, electric, for lighting; ; electrically heated carpets; heating apparatus, electric; heaters, electric, for feeding bottles; ; footwarmers, electric; heating filaments, electric; footmuffs, electrically heated; heating plates; radiators, electric; refrigerators; refrigerating containers; freezers; electric pressure cooking saucepans; electric coffee percolators; stoves; electric cooking utensils; electric yoghurt makers; waffle irons, electric; electric kettles; electric coffee filters; ice machines and apparatus; microwave ovens; electric deep fryers;  electric autoclaves; laundry dryers, electric are identically contained in both lists of goods (including synonyms).

The following contested goods are at least similar to the opponent’s goods because they may share relevant public and distribution channels, are usually directed at the same target audience and may come from the same producers:

The contested goods include apparatus for lighting such as standard lamps; lanterns for lighting and related parts such as lamp casings which are at least similar to the opponent’s electric light bulbs.

The contested goods include apparatus for heating such as central heating radiators; heating installations; aquarium heaters and related parts such as boiler pipes [tubes] for heating installations which are at least similar to the opponent’s electric heating apparatus.

The contested goods include refrigerating appliances and installations such as cold storage rooms; freezers which are at least similar to the opponent’s refrigerating containers.

The contested goods include apparatus for cooking such as kilns; cookers and related parts such as fittings, shaped, for ovens which are at least similar to the opponent’s cooking utensils (electric).

The contested goods include apparatus for drying such as driers (air -) which are at least similar to the opponent’s electric laundry dryers.

The contested goods include apparatus for ventilating or treating the air such as air purifying apparatus and machines and related parts such as filters for air conditioning which are at least similar to the opponent’s air-conditioning apparatus.

The contested goods include apparatus for steam generation such as steam accumulator and sauna bath installations which are at least similar to the opponent’s electric heating apparatus.

The contested regulating and safety accessories for water apparatus;  watering installations, automatic;  water intake apparatus; flushing apparatus; water filtering apparatus; water purifying apparatus and machines; water sterilizers; water distribution installations; water distribution installations; water supply installations; filters for drinking water; water softening apparatus and installations; washers for water taps; water-pipes for sanitary installations; water purifying installations; sewage purification installations; pressure water tanks; flushing tanks; toilet seats; drip irrigation emitters [irrigation fittings]; bathtubs; baths (spa -) [vessels]; hydromassage bath apparatus; bath tubs for sitz baths; bath plumbing fixtures; bath fittings; bidets; hydrants; shower stalls; turkish bath cabinets, portable; swimming pool chlorinating apparatus; toilets, portable; bath linings; watering machines for agricultural purposes; anti-splash tap nozzles; sanitary apparatus and installations; aquarium filtration apparatus; disinfectant distributors for toilets; showers; sinks; taps [faucets]; mixer taps for water pipes; water closets; wash-hand basins [parts of sanitary installations]; taps [cocks, spigots] faucets [am.] for pipes; chambers (clean) [sanitary installations]; fountains; ornamental fountains; toilet bowls; urinals [sanitary fixtures]; whirlpool-jet apparatus; desalination plants; gas scrubbers [parts of gas installations]; desiccating apparatus; disinfectant apparatus; deodorising apparatus, not for personal use; fuel economisers;  forges, portable; drying apparatus for fodder and forage; fumigation apparatus, not for medical purposes; nuclear reactors;  polymerisation installations; stills; processing installations for fuel and nuclear moderating material; chromatography apparatus for industrial purposes; oil-scrubbing apparatus; distillation apparatus; distillation columns; refining towers for distillation furnaces, other than for laboratory use; solar furnaces; loading apparatus for furnaces; ash pits for furnaces; ash conveyor installations, automatic are dissimilar to all of the opponent’s goods and services. The nature and purpose of the goods differ as does the method of use. The relevant public and distribution channels do not normally coincide. The goods are not in competition nor are they complementary.

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 at least similar are directed at the public at large or are specialised goods directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

The degree of attention for at least heating installations or safety apparatus for gas   will be high, given the cost and safety implications of such goods.

3. The signs

LIFE	LifeVit
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.

The common element ‘LIFE’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The earlier word mark is composed of the verbal element ‘LIFE’ which has no relation to most of the goods in question and for these goods it is distinctive. However for the goods in Class 10, which are medical apparatus that can be used to save lives, it is considered to be allusive and therefore weak.

The verbal element of the contested sign ‘LifeVit’ is meaningless and as such distinctive for the goods at hand. Although the sign is composed of one verbal element that has no meaning as a whole, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). The consumers will recognise the element ‘Life’ for which the above mentioned considerations apply. With regard to the remaining part, ‘Vit’, it is meaningless in relation to the relevant goods and therefore distinctive.

Visually and aurally, the signs coincide at the beginning in ‘LIFE’, weak for the goods in Class 10 and distinctive for the rest. However, they differ in the distinctive element ‘Vit’ present only in the contested sign. Therefore, the signs are similar to an average degree for those goods where ‘LIFE’ is distinctive and similar to low degree for those goods where ‘LIFE’ is weak.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the element ‘LIFE’ will be perceived in both signs, they are conceptually similar to an average degree for those goods where ‘LIFE’ is distinctive and to a low degree for those goods where ‘LIFE’ is weak.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for a part of the goods in question, namely those in Class 10. The mark has a normal degree of distinctiveness for the remaining part of the relevant territory, where it has no meaning in relation with the goods in question.

5. Global assessment, other arguments and conclusion

In the present case the goods have been found partly identical, partly at least similar and partly dissimilar. The signs have been found visually, aurally and conceptually similar to an average degree for those goods where ‘LIFE’ is distinctive and to a low degree for those goods where ‘LIFE’ is weak. The degree of attention of the relevant public varies for average to high and the earlier mark has a low level of distinctive character for those goods where ‘LIFE’ is weak and a normal level of distinctive character where ‘LIFE’ is distinctive.

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).

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).

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.

Therefore for those goods where ‘LIFE’ is distinctive, there is a likelihood of confusion on the part of the English-speaking relevant public. For this part of the public the signs are visually, aurally and conceptually similar to average degree and the distinctive character of the earlier mark is normal. The marks coincide in a distinctive element at the start of the signs where the consumer’s attention will be focused. The differentiating element ‘Vit’ is not sufficient to avoid a likelihood of confusion even among those consumers with a high degree of attention.

Similarly, for the goods where ‘LIFE’ is weak, a likelihood of confusion cannot be ruled out even for those consumers with a high degree of attention. For this part of the public the signs are similar to a low degree and the distinctive character of the earlier mark is low. The signs coincide in the element ‘LIFE’, which may be allusive in relation to the goods in Class 10 but it does have some trade mark significance. In addition the coincidence is at the beginning of the signs where its impact will be greatest.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to examples from the Office Guidelines where no likelihood of confusion is found where the coinciding element lacks distinctive character. However in the present case the coinciding element ‘LIFE’ may be allusive for some of the goods at hand but it is not non-distinctive.  Therefore the arguments of the applicant in this regard must be set aside.

The applicant refers in addition to previous decisions of the Office to support its arguments. 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant and submitted in the language of proceedings are not relevant to the present proceedings. The signs are not comparable as they are not single word elements as in the present case and the goods and services at issue are also different.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking section of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union 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 at least similar to those of the earlier trade mark.

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

Lars HELBERT

Lynn BURTCHAELL

Martin EBERL

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.