OPPOSITION No B 2 675 364

Torsa Sistemas, S.L., Almachar, 16, 29004, Málaga, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036, Barcelona, Spain (professional representative)

against

LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul  150-721, Republic of Korea (applicant), represented by Cohausz & Florack Patent-Und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211, Düsseldorf, Germany (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 675 364 is partially upheld, namely for the following contested goods:

Class 9:        Television receivers; display for television receivers; display modules for television receivers; TV remote controls; LED displays; OLED displays; none of the aforesaid being for use with portable and/or wearable electronic devices.

2.        European Union trade mark application No 14 830 558 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 14 830 558, ‘Neptune’ (word mark). The opposition is based on European Union trade mark registration No 14 644 413 and Spanish trade mark registration No 3 547 943, both for the figurative mark. The opponent invoked Article 8(1)(b) EUTMR.  

Preliminary issue

As stated above, the opponent seeks to rely upon European Union trade mark registration No 14 644 413 which has a filing date of 05/10/2015. The contested trade mark has a filing date of 25/11/2015 but successfully claimed priority based on its earlier Republic of Korea application (No. 40-2015-0054832) which was filed on 22/07/2015. In view of the priority claim, the opponent’s European Union trade mark registration No 14 644 413 does not qualify as an earlier right for the purposes of Article 8(1)(b) EUTMR and may not be relied upon.

Therefore, assessment under Article 8(1)(b) EUTMR shall be based solely on the opponent’s Spanish trade mark registration No 3 547 943 .  

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:        Measuring and checking (supervision) apparatus and instruments, namely for supply chains; apparatus for recording, transmission or reproduction of sound or images, namely for measuring and checking (supervision) supply chains; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media, namely for measuring and checking (supervision) supply chains.

The contested goods are the following:

Class 9:        Television receivers; Display for television receivers; Display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED Display; none of the aforesaid being for use with portable and/or wearable electronic devices.

Class 14:        Watches; Parts and fittings for watches; Wristwatches; Electronic clocks and watches; Bracelets with precious metal; Watch bands; Control clocks; Watches with wireless communication function; Watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs.

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

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 term ‘namely’, used in the opponent’s Spanish trade mark registration No 3 547 943 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.

Contested goods in Class 9

The contested television receivers; display for television receivers; display modules for television receivers; LED displays; OLED displays; none of the aforesaid being for use with portable and/or wearable electronic devices overlap with the opponent’s earlier apparatus for recording, transmission, reproduction of sound or images, namely for measuring and checking (supervision) supply chains.  Therefore, they are identical.

The contested TV remote controls; none of the aforesaid being for use with portable and/or wearable electronic devices are goods used to control the television, i.e. increase/decrease the sound, change channel, etc. Upon purchasing a television for use connected with the measuring and checking (supervision) supply chains (which are covered by the broader earlier relied upon goods apparatus for recording, transmission or reproduction of sound or images), they would invariably include a remote control in order to control the various settings of the television.  Therefore, the contested TV remote controls are complementary.  The respective goods would also be sold in the same outlets.  However, the goods do differ in nature.  Therefore, the aforementioned contested goods are considered to be similar to the earlier apparatus for recording, transmission or reproduction of sound or images, namely for measuring and checking (supervision) supply chains to a medium degree.

The contested 3D spectacles for television receivers; none of the aforesaid being for use with portable and/or wearable electronic devices are glasses used to watch television screens which are capable of projecting 3D images. Whilst it has been concluded that the earlier apparatus for recording, transmission or reproduction of sound or images, namely for measuring and checking (supervision) supply chains overlap with television receivers; none of the aforesaid being for use with portable and/or wearable electronic devices and these goods could project 3D images, it is unlikely that when they are used for measuring and checking (supervision) supply chains they will be in 3D format.  Therefore, they are considered to be dissimilar. These goods are also dissimilar to the rest of the goods of the Spanish registration since these have a different nature and purpose (measuring and checking, storing and recording data versus viewing devices which create the illusion of depth).

Contested goods in Class 14

With regard to the contested Watches; Parts and fittings for watches; Wristwatches; Electronic clocks and watches; Bracelets with precious metal; Watch bands; Watches with wireless communication function; Watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs they clearly differ in nature, purpose, distribution channels, producers to all of the goods covered by each of the earlier registration, particularly since the earlier goods relate solely to supply chains.  They are not in competition or complementary with one another.  They are dissimilar.  

The contested goods are also dissimilar to the earlier goods measuring and checking (supervision) apparatus and instruments, namely for supply chains; apparatus for recording, transmission or reproduction of sound or images, namely for measuring and checking (supervision) supply chains; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media, namely for measuring and checking (supervision) supply chains. The goods differ in the nature and purpose, the distribution channels, sales outlets and producers. They are not in competition with one another nor are they complementary.  They 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 similar or identical are directed either at business consumers (for example, display for television receivers) with specific TV manufacturing knowledge or to the public at large (for example, television receivers; display modules for television receivers; LED displays; OLED displays; TV remote controls; none of the aforesaid being for use with portable and/or wearable electronic devices). The degree of attention will vary from high for those goods which are purchased by professional users or that are more expensive, to average for the remaining goods.

3. The signs

	Neptune
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 contested sign is a single word mark, NEPTUNE.  

The earlier sign is figurative and is composed of the words ‘NEPTUNE BY TORSA’ and a circular abstract device.  By virtue of their size and position the elements ‘BY TORSA’ plays a secondary role in the earlier mark. The word NEPTUNE and the figurative element are the co-dominant elements of the mark.

Bearing in mind that when signs consist of both verbal and figurative components, in principle, the verbal component usually has a stronger impact on the consumer than the figurative component.

The common element Neptune could be perceived by a part of the Spanish consumers as the planet NEPTUNO although for the remaining consumers it is meaningless. Be as it may, since it has no relation with the relevant goods it is distinctive.

The expression ‘By Torsa’ of the earlier mark could be understood as referring to the manufacturer of the goods. Regardless of this, since the words are not descriptive of the goods in question these words are considered to be distinctive, whereas the figurative element is merely decorative.

Visually, the signs coincide in the word element ‘NEPTUNE’ which is the only word of the contested sign and the first element that will attract and retain customer’s attention in the earlier mark. Since the contested mark is fully incorporated in the earlier mark where it has a primary and distinctive role and bearing in mind the impact of the differentiating elements of the earlier mark (as detailed above) the marks are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‘NEP-TUNE’.  These will be pronounced in the same way.  The pronunciation differs in that some consumers may also enunciate the words ‘BY TORSA’.  However, given their position and size many consumers will not verbalise these words and merely refer to the goods as NEPTUNE.  In view of the aforementioned, the respective signs are considered to be aurally similar to a high degree.

Conceptually, whilst the Spanish spelling is Neptuno, the contested sign would be recognised and understood to be a reference to the planet Neptune.  Since each of the respective signs includes the planet NEPTUNE, they are considered to be conceptually highly similar.

As the signs have been found similar in at least some 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment and conclusion

In the present case, it has been established that the respective signs are aurally, visually and conceptually similar to a high degree.  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).  This is known as the interdependency principle.  

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or 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

Ioana MOISESCU

Mark KING

Carmen SÁNCHEZ PALOMARES

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.