OPPOSITION No B 2 677 634

Franz Harrer, Hochfellnstrasse 6, 83346 Bergen, Germany (opponent)

a g a i n s t

 

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

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 677 634 is partially upheld, namely for the following contested goods:

Class 9:                Apparatus for the recording/transmission or reproduction of sound and images; smart phones; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; television receivers; universal serial bus (USB) dongle (wireless network adapters); digital set top boxes; transmitters and receivers of electronic signals; adapters for wireless network access; home network devices; cloud server; server for home network system; server for home automation; wearable smart phones; wireless communication apparatus; modems; wireless routers; antennas for wireless communications apparatus; mobile phones; telecommunication machines and implements; telecommunication converters; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; semiconductor chips; chargers for electric batteries for smart phones (wireless chargeable); power supplies for smart phones; batteries for mobile phones; battery chargers for mobile phones; supporting battery for mobile phones; chargeable batteries; battery compensation chargers; battery charge devices; multi-function touch buttons; light switches; electric power distribution apparatus; apparatus for improving power efficiency; apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; apparatus for diagnosing electrical power installations; apparatus for measuring/monitoring/analyzing electricity consumption; electric wire and cable; plugs; sockets, plugs and other contacts (electric connectors); solar cell wafer; modules for photovoltaic power generation; solar wafers; solar batteries; crystalline silicon solar power cells; solar cell plates; solar cell panels; solar power panel for generation; solar panels for electricity generation; solar panels for the production of electricity; inverter used in solar power generation; accumulators for photovoltaic power; tablet PC; computer; portable computers; notebook PC; wearable computer; computer hardware modules for use in internet of things electronic devices; printers for use with computers; monitors (computer hardware); peripheral devices for computers; application processors; mouse (computer peripheral); keyboards; monitors for commercial purpose; digital signage; display for television receivers; display modules for television receivers; LED displays; 3D spectacles for television receivers; OLED display; wireless headsets; headset; wireless headset for mobile phones; ear phones; audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; DVD player; optical disc player; handheld media players; handheld CD players; supporting speaker for mobile phones; network surveillance cameras; audio speakers; digital audio interface apparatus; wireless audio/video receivers; digital audio and video recorders and players; speaker systems; electric audio and visual apparatus and instruments; handheld multimedia players; motion recognizing sensors; gyro sensors using GPS functions; motion detectors; invader sensors; privacy protection sensors; alarm sensors for refrigerators; alarm sensors for washing machines; range sensor; digital sensory devices; object detecting sensors; sensor controllers; pressure sensors; watch bands combined with sensor; sensors for measuring instruments; window opening and closing detecting sensors; door opening and closing detecting sensors; electronic security system for home network; sensor station; oscillation sensor devices; air pollution measuring devices; measuring and control devices for air conditioning technology; air measuring apparatus; dust measuring apparatus; automatic control apparatus and instruments; home automation device; weight scales not for medical purposes; measuring apparatus not for medical purposes; telemetric apparatus and instruments; remote control telemetering machines and apparatus; digital electronic controllers; electric control devices for heating and energy management; downloadable smart phone application (software); interfaces  for computers; computer software for controlling and managing access server applications; computer programs for connecting remotely to computers or computer networks; computer software; computer application software; downloadable computer software applications; operating system program for smart TV; operating system program for smart phones; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; application software for televisions; application software for smart phone; computer programs for accessing, browsing and searching online databases; computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; computer software for the remote control of security apparatus; computer software for the remote control of office machines and equipment; computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; computer software for the remote control of telephone sets and radiotelephony sets; computer software used to allow electronic devices to share data and communicate with each other; computer software and firmware used to allow electronic devices to share data and communicate with each other; computer operating system software; electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; software for network and device security; computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; software for mobile device management; TV remote controls; remote control apparatus; remote controls for controlling electronic products; remote multi switches; remote air conditioning control devices; remote control apparatus for controlling lighting; network attached storage; USB hardware; digital cameras; digital door locks; lighting control apparatus; tablet computers cases; flip cover for tablet computers; mobile phones cases; flip cover for mobile phones; smart phone rings; liquid crystal protective film for smart phones; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications.

Class 14:        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; watches; electronic watches; parts and fittings for watches; wristwatches; watchbands; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications.

2.        European Union trade mark application No 14 830 475 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 14 830 475. The opposition is based on European Union trade mark registration No 13 864 772. The opponent invoked Article 8(1)(a) and (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:        Ergometers and physiological power meters; dynamometers; wheelchair ergometers; treadmill ergometers; software for the documentation, visualisation, calculation and analysis of the blood lactate values and performance status of test persons/patients with integrated functions for training control and the evaluation of sports medical parameters, and for the control of ergometers; software for the documentation, visualisation, calculation and analysis of body movements, power trend curves, velocity trend curves, angular velocities, as well as ground reaction forces and the performance status of test persons/patients with integrated functions for training control and the evaluation of sports medical parameters, and for the control of ergometers; software for ergometric apparatus for cardio-respiratory diagnostics and cardiovascular training; data processing apparatus; electronic apparatus for data management for medical use; electric/electronic apparatus for measuring reaction times and for improving reaction times; contact mats and optical sensors in conjunction with software and optical and acoustic signals and biofeedback apparatus; software for the documentation and control of rehabilitative and sports medical activities; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; data processing equipment and computers; hardware and software and parts therefor, included in class 9; apparatus for recording, transmission or reproduction of sound or images; magnetic data carries; digital storage media; calculators; electronic display boards; remote control apparatus; electronic publications, downloadable; pedometers, step counters; chip cards (cards with integrated circuits); smart card readers; magnetic stripe cards and readers therefor; electric and electronic equipment, apparatus and instruments for the registering, storage, verification and application of biometric data; dialogue computers and installations and systems composed thereof; electric and electronic communications and telecommunications apparatus and instruments, including installed in other objects, and software therefor; electric and electronic equipment and apparatus for the optical and magnetic recording and processing of data relating to movement processes; interfaces for computers; strength-measuring apparatus, weight and pressure-measuring apparatus; solar installations for power generation; solar panels for production of electricity; inverters; electronic apparatus and instruments for control, regulation, acquisition and monitoring; photovoltaic installations; electric storage apparatus; satellite navigational apparatus; software for controlling, monitoring and analysing for all the aforesaid instruments and apparatus and for the associated peripheral devices; interface cards, interface converters and interface data protocols for all the aforesaid instruments and apparatus, and for peripheral devices therefor; parts, accessories and spare parts for all the aforesaid instruments and apparatus.

Class 10:        Apparatus for measuring pulse, heart, brain and nerve functions; walking bars (parallel bars); orthopaedic articles; walking aids, except mobile walking aids; strain-relief apparatus with patient jackets and traction apparatus, and physical therapy apparatus for the locomotion and mobilisation of patients; physical exercise apparatus, for medical purposes; wheelchair trainers for orthopedic training, orthopedic rehabilitation, mobilisation and for muscle building; cable control apparatus with weights and electronically controlled load simulation, for rehabilitation purposes; rehabilitation apparatus; cable control apparatus and power training equipment for physiotherapy; medical equipment, hydraulic arms, pneumatic arms and electromechanically operated arms for invalids; active and passive movement apparatus for rehabilitation purposes (expander-driven or motor-operated apparatus for moving limbs); artificial limbs; wheelchair ergometers; medical treadmill ergometers and other medical ergometers for rehabilitation and ergospirometry (for exercise tolerance tests); fitted transport cases, boxes and racks exclusively for medical apparatus and for the associated peripheral devices; parts, accessories and spare parts for all the aforesaid instruments and apparatus; lactate meters.

Class 28:        Gymnastic and sporting apparatus; treadmills, ladder apparatus (continuous ladders, climbing equipment), bicycle trainers, steppers, arm trainers, cross-trainers (full body trainer), swimming simulation training equipment, sprint trainers (traction support and traction resistance trainers); gymnastic parallel bars; games; playthings; gymnastic and sporting articles, not included in other classes, fitness apparatus; electronic, mechanical, hydraulic and pneumatic power training equipment and endurance training equipment; cable control apparatus with expanders or weights and electronically controlled load simulation, for sports and fitness purposes; power training equipment for sports and fitness; motion-support devices, motion-resistance devices and motion-simulation devices for sports purposes; parts, accessories and spare parts for all the aforesaid instruments and apparatus.

After a limitation filed by the applicant on 13/10/2016, the contested goods are the following:

Class 9:        Smart phones; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; display for mobile phones; display modules for mobile phones; semiconductor chips; application processors; wearable smart phones; tablet PC; computer; printers for use with computers; portable computers; notebook PC; monitors (computer hardware); monitors for commercial purpose; digital signage; wearable computer; television receivers; display for television receivers; display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED display; wireless headsets; headset; wireless headset for mobile phones; ear phones; audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; apparatus for the recording/transmission or reproduction of sound and images; network attached storage; chargers for electric batteries for smart phones (wireless chargeable); liquid crystal protective film for smart phones; smart phone rings; power supplies for smart phones; DVD player; optical disc player; handheld media players; handheld CD players; mobile phones cases; supporting speaker for mobile phones; flip cover for mobile phones; tablet computers cases; flip cover for tablet computers; batteries for mobile phones; battery chargers for mobile phones; supporting battery for mobile phones; chargeable batteries; battery compensation chargers; battery charge devices; mouse (computer peripheral); keyboards; USB hardware; universal serial bus (USB) dongle (wireless network adapters); digital set top boxes; digital cameras; network surveillance cameras; motion recognizing sensors; gyro sensors using GPS functions; motion detectors; invader sensors; privacy protection sensors; alarm sensors for refrigerators; alarm sensors for washing machines; range sensor; digital sensory devices; object detecting sensors; sensor controllers; pressure sensors; sensors for measuring instruments; window opening and closing detecting sensors; door opening and closing detecting sensors; remote control apparatus; transmitters and receivers of electronic signals; adapters for wireless network access; multi-function touch buttons; sensor station; audio speakers; digital door locks; remote controls for controlling electronic products; home network devices; electronic security system for home network; home automation device; downloadable smart phone application (software); interfaces and peripheral devices for computers; cloud server; server for home network system; server for home automation; digital audio interface apparatus; wireless audio/video receivers; wireless communication apparatus; remote multi switches; oscillation sensor devices; air pollution measuring devices; measuring and control devices for air conditioning technology; air measuring apparatus; dust measuring apparatus; weight scales not for medical purposes; measuring apparatus not for medical purposes; automatic control apparatus and instruments; light switches; electric power distribution apparatus; apparatus for improving power efficiency; apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; lighting control apparatus; apparatus for diagnosing electrical power installations; apparatus for measuring/monitoring/analyzing electricity consumption; electric wire and cable; digital audio and video recorders and players; speaker systems; electric audio and visual apparatus and instruments; handheld multimedia players; modems; wireless routers; antennas for wireless communications apparatus; remote air conditioning control devices; telemetric apparatus and instruments; remote control telemetering machines and apparatus; mobile phones; telecommunication machines and implements; remote control apparatus for controlling lighting; telecommunication converters; computer software for controlling and managing access server applications; computer programs for connecting remotely to computers or computer networks; computer software; digital electronic controllers; plugs; sockets, plugs and other contacts (electric connectors); solar cell wafer; modules for photovoltaic power generation; solar wafers; solar batteries; crystalline silicon solar power cells; solar cell plates; solar cell panels; solar power panel for generation; solar panels for electricity generation; solar panels for the production of electricity; inverter used in solar power generation; accumulators for photovoltaic power; electric control devices for heating and energy management; computer hardware modules for use in internet of things electronic devices; computer application software; downloadable computer software applications; operating system program for smart TV; operating system program for smart phones; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; application software for televisions; application software for smart phone; computer programs for accessing, browsing and searching online databases; computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; computer software for the remote control of security apparatus; computer software for the remote control of office machines and equipment; computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; computer software for the remote control of telephone sets and radiotelephony sets; computer software used to allow electronic devices to share data and communicate with each other; computer software and firmware used to allow electronic devices to share data and communicate with each other; computer operating system software; electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; software for network and device security; computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; software for mobile device management; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; watch bands combined with sensor; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications.

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; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications.

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.

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 the recording/transmission or reproduction of sound and images are identically contained in both lists of goods.

The contested smart phones; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; television receivers; universal serial bus (USB) dongle (wireless network adapters); digital set top boxes; transmitters and receivers of electronic signals; adapters for wireless network access; home network devices; cloud server; server for home network system; server for home automation; wearable smart phones; wireless communication apparatus; modems; wireless routers; antennas for wireless communications apparatus; mobile phones; telecommunication machines and implements; telecommunication converters; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications  are included in the broad categories of, or overlap with, the opponent’s electric and electronic communications and telecommunications apparatus and instruments, including installed in other objects, and software therefor; parts, accessories and spare parts for all the aforesaid instruments and apparatus. Therefore, they are identical.

The contested semiconductor chips; chargers for electric batteries for smart phones (wireless chargeable); power supplies for smart phones; batteries for mobile phones; battery chargers for mobile phones; supporting battery for mobile phones; chargeable batteries; battery compensation chargers; battery charge devices; multi-function touch buttons; light switches; electric power distribution apparatus; apparatus for improving power efficiency; apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; apparatus for diagnosing electrical power installations; apparatus for measuring/monitoring/analyzing electricity consumption; electric wire and cable; plugs; sockets, plugs and other contacts (electric connectors); none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad category of, or overlap with, the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested solar cell wafer; modules for photovoltaic power generation; solar wafers; solar batteries; crystalline silicon solar power cells; solar cell plates; solar cell panels; solar power panel for generation; solar panels for electricity generation; solar panels for the production of electricity; inverter used in solar power generation; accumulators for photovoltaic power; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad categories of, or overlap with, the opponent’s solar installations for power generation; solar panels for production of electricity. Therefore, they are identical.

The contested inverter used in solar power generation; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad category of the opponent’s inverters. Therefore, they are identical.

The contested tablet PC; computer; portable computers; notebook PC; wearable computer; computer hardware modules for use in internet of things electronic devices; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad category of, or overlap with, the opponent’s data processing equipment and computers. Therefore, they are identical.

The contested printers for use with computers; monitors (computer hardware); peripheral devices for computers; application processors; mouse (computer peripheral); keyboards; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad category of, or overlap with, the opponent’s hardware and parts therefor, included in Class 9. Therefore, they are identical.

The contested monitors for commercial purpose; digital signage; display for television receivers; display modules for television receivers; LED displays; 3D spectacles for television receivers; OLED display; wireless headsets; headset; wireless headset for mobile phones; ear phones; audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; DVD player; optical disc player; handheld media players; handheld CD players; supporting speaker for mobile phones; network surveillance cameras; audio speakers; digital audio interface apparatus; wireless audio/video receivers; digital audio and video recorders and players; speaker systems; electric audio and visual apparatus and instruments; handheld multimedia players; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad categories of, or overlap with, the opponent’s apparatus for the recording/transmission or reproduction of sound and images. Therefore, they are identical.

The contested motion recognizing sensors; gyro sensors using GPS functions; motion detectors; invader sensors; privacy protection sensors; alarm sensors for refrigerators; alarm sensors for washing machines; range sensor; digital sensory devices; object detecting sensors; sensor controllers; pressure sensors; watch bands combined with sensor; sensors for measuring instruments; window opening and closing detecting sensors; door opening and closing detecting sensors; electronic security system for home network; sensor station; oscillation sensor devices; air pollution measuring devices; measuring and control devices for air conditioning technology; air measuring apparatus; dust measuring apparatus; automatic control apparatus and instruments; home automation device; weight scales not for medical purposes; measuring apparatus not for medical purposes; telemetric apparatus and instruments; remote control telemetering machines and apparatus; digital electronic controllers; electric control devices for heating and energy management; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad categories of, or overlap with, the opponent’s optical, weighing, measuring, signalling, checking (supervision) apparatus and instruments. Therefore, they are identical.

The contested downloadable smart phone application (software); interfaces  for computers; computer software for controlling and managing access server applications; computer programs for connecting remotely to computers or computer networks; computer software; computer application software; downloadable computer software applications; operating system program for smart TV; operating system program for smart phones; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; application software for televisions; application software for smart phone; computer programs for accessing, browsing and searching online databases; computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; computer software for the remote control of security apparatus; computer software for the remote control of office machines and equipment; computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; computer software for the remote control of telephone sets and radiotelephony sets; computer software used to allow electronic devices to share data and communicate with each other; computer software and firmware used to allow electronic devices to share data and communicate with each other; computer operating system software; electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; software for network and device security; computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; software for mobile device management; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad category of the opponent’s software. Therefore, they are identical.

The contested TV remote controls; remote control apparatus; remote controls for controlling electronic products; remote multi switches; remote air conditioning control devices; remote control apparatus for controlling lighting; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad category of, or overlap with, the opponent’s remote control apparatus. Therefore, they are identical.

The contested network attached storage; USB hardware; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad category of the opponent’s digital storage media. Therefore, they are identical.

The contested digital cameras; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are included in the broad category of the opponent’s photographic apparatus. Therefore, they are identical.

The contested digital door locks; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are related to the opponent’s smart card readers, which, in combination with the contested goods, may be used to perform tasks like granting access to doors. These goods target the same public and are distributed through the same channels. Moreover, they are complementary. For instance, digital door locks with the implementation of card reader technology. Therefore, they are similar.

The contested lighting control apparatus; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are devices with the main function of controlling individual lights or groups of lights from a single user interface device. This ability to control multiple light sources from a user device allows complex lighting scenes to be created, in addition to reducing the amount of electric lightning and consumption. These goods are clearly related to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity and they can be considered complementary to each other. These goods can be produced by the same undertaking (e.g. electronics manufacturers), and they can be sold through the same distribution channels. Moreover, they target the same relevant public. Therefore, they are similar.

The contested tablet computers cases; flip cover for tablet computers; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are similar to the opponent’s computers. It is clear that a link exists between these goods and they can be considered complementary to each other. These goods can be produced by the same manufacturers (e.g. fitted cases for tablet computers from the same undertaking), and they can be sold through the same distribution channels. Moreover, they target the same relevant public.

The contested mobile phones cases; flip cover for mobile phones; smart phone rings; liquid crystal protective film for smart phones; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are related to the opponent’s accessories for all the aforesaid instruments and apparatus (of electric and electronic telecommunications apparatus). It can be assumed that communication and telecommunication apparatus category includes mobile and smart phones since they are essentially portable telecommunication devices. Furthermore, it is common that some accessories are also produced by the manufacturer of the main product. Consequently, the consumer may expect that these goods can be produced by the same manufacturers, and they can be sold through the same distribution channels. Moreover, they target the same relevant public. Therefore, they are similar.

Contested goods in Class 14

The contested 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; watches; electronic watches; parts and fittings for watches; wristwatches; watchbands; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications include or are watches or their parts with functionalities that go beyond timekeeping only, even if they are classified in Class 14 (e.g. wireless telecommunication function or navigation, tracking, or guidance functions for hikers or runners). They are effectively wearable computer/devices that use an operating system and can also function as portable media players via Bluetooth or USB. Therefore, the dividing line between the different categories of these hybrid watches and the opponent’s electric and electronic communications and telecommunications apparatus and instruments, including installed in other objects, and software therefor and computers in Class 9 is nowadays blurred. These goods may be manufactured by the same companies (traditional watch makers like Tag Heuer or IWC have started offering watches with additional ‘smart’ functions), they are sold through the same distribution channels and they target the same public. They can, moreover, have the same method of use. Therefore, these goods are considered similar.

In the case of the contested electronic clocks; control clocks; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications, however, this reasoning does not apply, since these goods are clearly of a different nature as they do not have such data processing functions but measure time or alert individuals at specified time. These goods are made of the traditional timekeeping elements and are either electrically powered or battery-operated. They are manufactured by different companies using different techniques. Moreover, they are not sold in the same shops as the opponent’s goods in Classes 9, 10 and 28 which are essentially characterised by their technological nature. Consequently, these goods are dissimilar.

The contested bracelets with precious metal; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications are jewellery products and are dissimilar to all the opponent’s goods in Classes 9, 10 and 28. They are of a completely different nature, they have a different purpose, they do not target the same public and they are produced by different manufacturers. They are not complementary to, or in competition with, the opponent’s goods and/or services.

2. The signs

venus	Venus
Earlier trade mark	Contested sign

The fact that the earlier trade mark is depicted in lower case and the contested sign in title case is immaterial for the purpose of comparison, since in the case of word marks it is the word as such that is protected and not its written form. Therefore, the signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, namely apparatus for the recording/transmission or reproduction of sound and images; smart phones; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; television receivers; universal serial bus (USB) dongle (wireless network adapters); digital set top boxes; transmitters and receivers of electronic signals; adapters for wireless network access; home network devices; cloud server; server for home network system; server for home automation; wearable smart phones; wireless communication apparatus; modems; wireless routers; antennas for wireless communications apparatus; mobile phones; telecommunication machines and implements; telecommunication converters; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; semiconductor chips; chargers for electric batteries for smart phones (wireless chargeable); power supplies for smart phones; batteries for mobile phones; battery chargers for mobile phones; supporting battery for mobile phones; chargeable batteries; battery compensation chargers; battery charge devices; multi-function touch buttons; light switches; electric power distribution apparatus; apparatus for improving power efficiency; apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; apparatus for diagnosing electrical power installations; apparatus for measuring/monitoring/analysing electricity consumption; electric wire and cable; plugs; sockets, plugs and other contacts (electric connectors); solar cell wafer; modules for photovoltaic power generation; solar wafers; solar batteries; crystalline silicon solar power cells; solar cell plates; solar cell panels; solar power panel for generation; solar panels for electricity generation; solar panels for the production of electricity; inverter used in solar power generation; accumulators for photovoltaic power; tablet PC; computer; portable computers; notebook PC; wearable computer; computer hardware modules for use in internet of things electronic devices; printers for use with computers; monitors (computer hardware); peripheral devices for computers; application processors; mouse (computer peripheral); keyboards; monitors for commercial purpose; digital signage; display for television receivers; display modules for television receivers; LED displays; 3D spectacles for television receivers; OLED display; wireless headsets; headset; wireless headset for mobile phones; ear phones; audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; DVD player; optical disc player; handheld media players; handheld CD players; supporting speaker for mobile phones; network surveillance cameras; audio speakers; digital audio interface apparatus; wireless audio/video receivers; digital audio and video recorders and players; speaker systems; electric audio and visual apparatus and instruments; handheld multimedia players; motion recognizing sensors; gyro sensors using GPS functions; motion detectors; invader sensors; privacy protection sensors; alarm sensors for refrigerators; alarm sensors for washing machines; range sensor; digital sensory devices; object detecting sensors; sensor controllers; pressure sensors; watch bands combined with sensor; sensors for measuring instruments; window opening and closing detecting sensors; door opening and closing detecting sensors; electronic security system for home network; sensor station; oscillation sensor devices; air pollution measuring devices; measuring and control devices for air conditioning technology; air measuring apparatus; dust measuring apparatus; automatic control apparatus and instruments; home automation device; weight scales not for medical purposes; measuring apparatus not for medical purposes; telemetric apparatus and instruments; remote control telemetering machines and apparatus; digital electronic controllers; electric control devices for heating and energy management; downloadable smart phone application (software); interfaces  for computers; computer software for controlling and managing access server applications; computer programs for connecting remotely to computers or computer networks; computer software; computer application software; downloadable computer software applications; operating system program for smart TV; operating system program for smart phones; multimedia computer software for the reproduction, processing and streaming of audio, video, and other digital content; application software for televisions; application software for smart phone; computer programs for accessing, browsing and searching online databases; computer software to enable users to program and distribute audio, video, text and other multimedia content, namely, music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related and educational programs via communication network; computer application software for smart phones, mobile phones, smart TV and handheld electric communication device; computer software for the remote control of security apparatus; computer software for the remote control of office machines and equipment; computer application software for the remote control of electronic apparatus and instruments and consumer electronic apparatus and electric lighting apparatus; computer software for the remote control of telephone sets and radiotelephony sets; computer software used to allow electronic devices to share data and communicate with each other; computer software and firmware used to allow electronic devices to share data and communicate with each other; computer operating system software; electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; software for network and device security; computer software for others to use for the development of software to manage, operate and connect internet of things electronic devices; software for mobile device management; TV remote controls; remote control apparatus; remote controls for controlling electronic products; remote multi switches; remote air conditioning control devices; remote control apparatus for controlling lighting; network attached storage; USB hardware; digital cameras; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications in Class 9 are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, the contested goods namely digital door locks; lighting control apparatus; tablet computers cases; flip cover for tablet computers; mobile phones cases; flip cover for mobile phones; smart phone rings; liquid crystal protective film for smart phones; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications in Class 9 and 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; watches; electronic watches; parts and fittings for watches; wristwatches; watchbands; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications  in Class 14 were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is also upheld insofar as it is directed against these goods.

The rest of the contested goods are dissimilar. As the 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and/or the goods are obviously not identical.

On 14/05/2017, the opponent also claimed that the use without due cause of the contested sign would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier mark. However, the opponent made this claim after the expiry of the time limit set for this purpose, i.e. the end of opposition period, which in this case correspond to the date of 23/03/2017. Consequently, the Opposition Division will not take this ground into account in the examination of the opposition.

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

Andrea VALISA

Birgit FILTENBORG

María Clara IBÁÑEZ FIORILLO

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.