OPPOSITION No B 2 649 443

Kabushiki Kaisha Toshiba, also trading as Toshiba Corporation, 1-1, Shibaura 1-chome, Minato-ku, Tokyo 105-8001, Japan (opponent), represented by Rapisardi Intellectual Property Limited, 2A Collier House, 163/169 Brompton Road, London SW3 1PY, United Kingdom (professional representative)

a g a i n s t

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

17/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 649 443 is partially upheld, namely for the following contested goods:

Class 14:        Parts and fittings for watches.

2.        European Union trade mark application No 14 594 691 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 14 594 691. The opposition is based on European Union trade mark registration No 13 856 241. The opponent invoked Article 8(1)(b) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(a) and (b) EUTMR

The opponent did not explicitly invoke Article 8(1)(a) EUTMR as a ground for the opposition. The wording of Article 8(1)(a) EUTMR requires identity between both the signs concerned and the goods/services in question. This situation is referred to as ‘double identity’. Whether or not there is double identity is a legal finding to be established from a direct comparison of the two conflicting signs and the goods in question. Where double identity is established, the opponent is not required to demonstrate likelihood of confusion to prevail; the protection conferred by Article 8(1)(a) EUTMR is absolute. Consequently, where there is double identity, there is no need to carry out an evaluation of likelihood of confusion, and the opposition will automatically be upheld.

Pursuant to 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:         Microcontrollers.

The contested goods are, after a limitation, the following:

Class 9:        Smart phones; Portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; Wearable Smart phones; Tablet PC; Computer; Wearable Computer; Television receivers.

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.

Contested goods in Class 9

A microcontroller is a small computer on a single integrated circuit. It is an integrated chip that is often part of an embedded system. The microcontroller includes a CPU, RAM, ROM, I/O ports and timers, like a standard computer, but, because it is designed to execute only a single specific task to control a single system, it is much smaller and simplified so that it can include all the functions required on a single chip. Microcontrollers are used in automatically controlled products and devices, such as automobile engine control systems, implantable medical devices, remote controls, office machines, appliances, power tools, toys and other embedded systems. By reducing the size and cost compared with a design that uses a separate microprocessor, memory and input/output devices, microcontrollers make it economical to digitally control even more devices and processes. Wearable devices are miniature electronic devices worn on the body, often integrated with or designed to replace existing accessories such as watches. The most important electronic component in wearable devices is the microcontroller.

The mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61).

Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity, are fulfilled. Such an exception is based on the fact that parts and fittings are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public, as in the case of spare or replacement parts. Depending on the product concerned, the public may also expect the component to be produced by, or under the control of, the ‘original’ manufacturer, which is a factor that suggests that the goods are similar. In general, a variety of factors may be significant in each particular case. For instance, if the component is also sold independently, or if it is particularly important for the functioning of the machine, this will favour similarity.

The contested smart phones; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; wearable smart phones; tablet PC; computer; wearable computer; television receivers are devices that may include one or more of the goods covered by the earlier mark. As described above, the mere fact that a final product may include or use certain components, is not per se sufficient to make those components similar to the final product within the meaning of Article 8(1)(b) EUTMR. The nature and purpose of the opponent’s components and the contested goods are different. They are neither complementary nor in competition. Therefore, they are considered dissimilar.

Contested goods in Class 14

The contested parts and fittings for watches overlap with the opponent’s microcontrollers, since microcontrollers may be parts of watches, as described above. Therefore, they are considered identical.

The contested watches; wristwatches; electronic clocks and watches; 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 are all different kinds of clocks and watches. The mere fact that these devices may contain the opponent’s goods is not per se sufficient to make those components similar to the final product, as described above. The natures, purposes, methods of use and relevant public are not the same. They are neither complementary nor in competition. Therefore, they are considered dissimilar.

The contested bracelets with precious metal; watch bands are parts and accessories for watches, but not part of the clockwork. Therefore, they are considered dissimilar to the opponent’s microcontrollers. They are of a different nature, have different purposes, producers and distribution channels, and they are not complementary or in competition.

2. The signs

VIVACE	VIVACE
Earlier trade mark	Contested sign

The signs are identical.

3. Conclusion

The signs are identical. Some of the goods are identical and some are dissimilar.

Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for the goods found to be identical to those of the earlier mark.

Consequently, since the signs are identical and some of the contested goods, namely parts and fittings for watches, in Class 14, are identical to the opponent’s goods, the opposition must be upheld in accordance with Article 8(1)(a) EUTMR for 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.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 856 241.

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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Plamen IVANOV

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.