OPPOSITION No B 2 141 847

Optimus-Comunicações S.A., Lugar do Espido, Via Norte, 4470-901 Maia, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

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

On 29/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 141 847 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 10 559 301, namely against all the goods and services in Classes 9, 35 and 38. The opposition is based on Portuguese trade mark registration No 461 336. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 9: Mobile phones and cards used with mobile phones, telecommunications equipment, communication and transmission apparatus and terminals for the broadcasting, transmission and reception of information; computers, including magnetic data carriers, parts and accessories for all these goods; cd-roms.

Class 35: Services of publication of advertising texts and sales promotions for third parties, in particular via the internet.

Class 38: Construction, assembly of telecommunications equipment.

The contested goods and services are the following:

Class 9: Telephone sets; Wireless Telephone sets; Portable communications apparatus namely mobile phone handsets, walkie-talkies, satellite telephones and personal digital assistants; Mobile phones; MPEG audio layer-3 players; Television receivers; Television remote controllers; Encoded electronic chip cards for improvement of television image quality; Universal serial bus hardware drives; Digital media broadcasting players, namely, digital audio players; Headsets for mobile phones; Portable Chargers for mobile phone batteries and digital camera batteries; Electronic Photo Albums; Digital Picture Frames for displaying digital pictures, video clips and music; Monitors for computer; Lap Top computers; Computers; Digital Versatile Disc players; Portable hard disk drives; Apparatus for recording, transmission or reproduction of sound or images for use in telecommunications; Apparatus for recording, transmission or reproduction of sound or images; Electric audio and visual apparatus and instruments, namely, audio and video cassette recorders, audio recorders, video tape recorders, or audio-video receivers; Stereos; Computer application software for mobile phone; Computer application software for television; Computer application software for personal computer monitor; Digital Versatile Disc players for home theaters; Audio speakers for home theaters; Audio-Video receivers for home theaters; Multimedia projectors for home theaters; Integrated circuits; Audio Receivers; electronic encoded toll smart cards containing programming used to pay electronic toll collections; Closed-Circuit Television Cameras; Network monitoring cameras namely for surveillance; Electronic displays, namely, digital signage; Thermal printers; Digital colour printers; Laser printers; Ink jet printers; Colour printers; Printers for use with computers; Solar batteries; Personal Computer Cameras; Digital voice recorders; Videocassette recorders; Network monitors; Electronic Notepads; Tablet computers; Interactive electronic white board computers; Settop boxes; Downloadable image files accessible via the Internet; Electronic downloadable publications in the nature of magazines, newspapers, books, manuals in the field of electronics; Video conference system comprising video cameras and audio speakers; Monitors for video conference; Cameras for video conference; Speakers for video conference; Three dimensional eyeglasses for television receivers; DNA chips; Dosage dispensers, namely, machines for dispensing pre-determined dosages of medication; Capillary tubes; Oxygen transvasing apparatus; Incubators for bacteria culture; Laboratory equipment and supplies, namely, test tubes; Food analysis apparatus; Physical and chemical laboratory apparatus and instruments; Apparatus for automatic chromatography; Magnetic agitators for laboratory use; Pipettes; Computer software for dosimetry purposes in the field of radiotherapy; Computer software for medical purposes; Biochips for research or scientific purposes; Cell chips; Testers for cell chips; Analysis apparatus for cell chips; Diagnostic chips for pharmaceutical purposes, namely, biochips; Diagnostic chips for medical purposes, namely, biochips; Computer software for diseases diagnostics for medical purposes; Computer software for developing and management of electronic chart for medical purposes; Scanners; Mouses for computers.

Class 35: Advertisement Planning, namely, preparation and realization of advertising plans; Advertising agencies; Demonstration of goods; Public opinion polling; Providing services for publicity information; Employment agencies; Auctioneering; Commercial information agency; Commercial intermediary services in the field of portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA], mobile phones; On-line auctioneering services; On-line employment agencies via global computer networks; Provision of consumer information via global computer network; Provision of commercial information via global internet; Arrangement and operation of advertising material on Computer network and Global communication network; Consumer purchase assistance for goods and services via global computer network; Business management; Advertising via electronic media and the internet for business management; Sales promotion for others via computer network; Provision of commercial information via computer network; Provision of advertising information via global computer network; Office machines and equipment rental; Commercial intermediary services for information communication machines and apparatus, computers, office machines and equipment, electric tools apparatus for food and drink processing, pneumatic or hydraulic machines and instruments, chemical apparatus and machines, telecommunication machines and apparatus, electric Heat apparatus and equipment for household purposes, heating apparatus, refrigerating machines and apparatus, heaters, dish disinfectant apparatus, medical machines and apparatus, pharmaceutical products; Sales arranging services for information communication machines and apparatus, electric tools apparatus for food and drink processing, pneumatic or hydraulic machines and instruments, chemical apparatus and machines, telecommunication machines and apparatus, electric heat apparatus and equipment for household purposes, heating apparatus, refrigerating machines and apparatus, heaters, dish disinfectant apparatus, pharmaceutical products, medical supplies; Wholesale distributorships featuring pharmaceutical products; Retail store services featuring pharmaceutical products; Brokerage services of pharmaceutical products.

Class 38: Communications by fiber [fibre] optic networks; Data communication, namely, broadband radio communication services; Wireless broadband communication services; VAN communications, namely, providing communications via value-added network (VAN) transmission services; Remote screen communication, namely, providing teleconferencing and video conferencing services; Rental of telecommunication equipment; Communication by computer terminals; News agencies, namely, the transmission of news items to news reporting organizations; Cellular telephone communication; Cable television broadcasting; Operation of broadband telecommunication networks for others; Audio teleconferencing; Network audio and videoconferencing services; Providing facilities and equipment for video conferencing; Providing telephone conferencing services; Local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable, and satellite transmissions; Video teleconferencing services; Web audio and video conferencing services; Wireless electronic transmission services of voice signals, data, facsimiles, images and information.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. The signs

OPTIMUS SMART	Smart Turbo
Earlier trade mark	Contested sign

The relevant territory is Portugal.

Visually, the signs are similar to the extent that they coincide in the word ‘SMART’. However, they differ in the position of this common element, which is the second element in the earlier mark and the first element in the contested sign, as well as in the additional verbal elements being ‘OPTIMUS’ in the earlier mark and ‘TURBO’ in the contested sign.

Aurally, the pronunciation of the signs coincides in the syllable ‘SMART’ present identically in both signs, and to that extent the signs are aurally similar. On the other hand, the pronunciation differs in the syllables ‛OP-TI-MUS‘ of the earlier mark and ‘TUR-BO’ of the contested sign, which have no counterparts in the other sign. Due to their addition to and different position vis-à-vis the word ‘SMART’, the signs have a different aural pattern and intonation.

Conceptually, the word ‘SMART’, present in both signs, has no semantic connotation for the public in the relevant territory. The word ‘OPTIMUS’ in the earlier mark is a Latin word and refers to ‘one of the best, noble’. Although, this word does not exist as such in Portuguese, it cannot be ruled out that a part of the relevant public will associate it with the superlative of the word ‘good’, on account of its similarity to the equivalent Portuguese word ‘óptimo’. The word ‘TURBO’ in the contested sign indicates ‘a centrifugal blower driven by exhaust gas turbines and used to supercharge an engine’.

It follows from this that the signs cannot be similar due to the concept of the word ‘TURBO’ of the contested sign. To the extent that word ‘OPTIMUS’ of the earlier mark is also associated with a certain meaning, they are even conceptually dissimilar.

Taking into account the abovementioned visual and aural coincidences, it is considered that the signs have a certain degree similarity.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

In terms of distinctiveness, as explained in section b) of this decision, the element ‘OPTIMUS’ of the earlier mark means in Latin ‘one of the best, noble’. However, since it is a Latin word and, therefore, obsolete, it cannot be deemed laudatory in the true sense of the word. Furthermore, account has to be taken of the fact that the word does not exist as such in Portuguese. Although part of the relevant public might associate it with the Portuguese word ‘óptimo’ (i.e. the best) and, therefore, indirectly with the idea of something that is of a higher quality, this part of the public will nonetheless clearly perceive the differences between these terms. Moreover, ‘OPTIMUS’ will not be linked to any of the characteristics of the goods and services because it is followed by a meaningless word, ‘SMART’, which renders any association with something that is ‘the best’ remote and vague. As regards the word ‘TURBO’ of the contested sign, this word is not meaningful for the electronic and technical equipment, business support services and telecommunication services applied for, as these goods and services do not relate to cars or the activity of driving them. Therefore, the signs under comparison have no elements which could be considered clearly more distinctive than other elements.

Since both signs are word marks, they have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 and services 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. 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 and services assumed to be identical are mainly directed at the public at large. The public’s degree of attentiveness may vary from average to high depending on the price, sophistication or terms and conditions of the purchased goods and services.

6. Global assessment, other arguments and conclusion

In the present case the signs have been found to have certain similar aspects because they both contain the word ‘SMART’. However, this coincidence is not sufficient to lead to a finding of likelihood of confusion, taking into account that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 11/11/1997, C‑251/95, ‘Puma/Sabèl’, paragraph 23).

First, the earlier mark is not identically repeated in the contested sign, but only partially namely its second element ‘SMART’. Second, this common element is neither the more distinctive nor the more eye-catching element of the signs in question. In fact, both signs consist of two, more or less equally distinctive and dominant elements, meaning that the consumer will not focus on the element ‘SMART’, but will perceive both signs as a whole. Thirdly, the common element ‘SMART’ does not appear in the same order, but in reversed order, being the last element of the earlier mark and the first of the contested sign.

Due to this reversed order of the word ‘SMART’, the signs have completely different beginnings. In this regard, it has to be noted that, generally, consumers tend to focus on the first element of a sign when confronted with a trade mark. This is justified by the fact that 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.

Consequently, the fact that the signs under comparison have completely different beginnings, that is ‘OPTIMUS’ in the earlier mark and ‘SMART’ in the contested sign, has an impact on their overall appearance and is of such a nature as to create a different overall impression, both in appearance and in aural pattern and intonation enabling the public to safely distinguish, visually and aurally, between them.

It should further be taken into account that from a conceptual point of view, at least the contested application, will be associated with a clear meaning. In accordance with the case-law, such conceptual differences can, in certain circumstances, counteract the visual and phonetic similarities between the signs concerned. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (judgment of 22 June 2004, T-185/02, ‘Picaro’, para. 56). Therefore, in addition to the visual and aural differences present at the more important part of the signs, namely their beginnings, the fact that at least the contested sign has a clear meaning, is a factor which further distinguishes the signs in question.

Therefore, on the basis of all the foregoing, even in the case that the relevant public is not highly attentive, taking into account all the relevant circumstances of the case, in particular the fact that the common element ‘SMART’ occupies a different location in the signs, it must be concluded that the additional differing elements of the signs are clearly perceptible and safely counteract the similarities between the signs. Consequently, the relevant public is not likely to believe that the earlier mark and the contested sign originate from the same undertaking or economically-linked undertakings, and, as a result, there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) CTMR. Therefore, the opposition must be rejected.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Julia SCHRADER

Adriana VAN ROODEN

Dorothée SCHLIEPHAKE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.