OPPOSITION No B 2 293 184

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

a g a i n s t

Misfit Inc., 5 Brookdale Road, Salem, New Hampshire 03079, United States of America (applicant), represented by Graham Watt & Co LLP, St Botolph’s House, 7-9 St Botolph’s Road, Sevenoaks, Kent TN13 3AJ, United Kingdom (professional representative).

On 01/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 293 184 is upheld for all the contested goods, namely:

Class 9: Multifunctional electronic devices that measure, track, analyse, display, upload and transmit data related to physical activity, fitness and general health; electronic clothing accessories that measure, track, analyse, display, upload and transmit data related to physical activity, fitness and general health; mobile device software applications and computer software applications for measuring, tracking, analysing, displaying, uploading and transmitting data transmitted from multifunctional electronic devices or specialized clothing and clothing accessories worn by users regarding their physical activity, fitness and general health; mobile device software applications and computer software applications that provide users with information and analysis regarding their physical activity, fitness and general health and provide access to an online Union that focuses on physical activity, fitness and general health, in class 9.

2. European Union trade mark application No 11 747 111 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 747 111, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 5 409 685. The opponent invoked Article 8(1)(b) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 9: Portable communications apparatus, namely, radios, handsets, walkie-talkies, satellite telephones, land line telephones, digital cellular phones.

After a limitation of the scope of protection of the European Union trade mark application filed by the applicant on 04/03/2014, the contested goods are the following:

Class 9: Multifunctional electronic devices that measure, track, analyse, display, upload and transmit data related to physical activity, fitness and general health; electronic clothing accessories that measure, track, analyse, display, upload and transmit data related to physical activity, fitness and general health; mobile device software applications and computer software applications for measuring, tracking, analysing, displaying, uploading and transmitting data transmitted from multifunctional electronic devices or specialized clothing and clothing accessories worn by users regarding their physical activity, fitness and general health; mobile device software applications and computer software applications that provide users with information and analysis regarding their physical activity, fitness and general health and provide access to an online Union that focuses on physical activity, fitness and general health, in class 9.

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 opponent’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.

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

The contested multifunctional electronic devices that measure, track, analyse, display, upload and transmit data related to physical activity, fitness and general health and electronic clothing accessories that measure, track, analyse, display, upload and transmit data related to physical activity, fitness and general health are electronic devices, the main function of which is to monitor, analyse, display and broadcast physical activity, fitness and general health data and performance. The opponent’s digital cellular phones are telephones that can make and receive calls over a radio frequency carrier while the user is in a telephone service area. However, it must be taken into account that modern mobile phones support a variety of other services, such as email, internet access, short-range wireless communications, applications, gaming and photography. The reality of the market is that mobile phones may also – by means of specific software applications and hardware such as GPS, accelerometers and gyroscopes – be used to measure, track, analyse, display and share data related to physical activities and general health. In addition, because dedicated mobile phone covers are available, the phones may be carried during various sporting activities such as biking, running and skiing. Therefore, the goods at issue may have the same purpose, to measure, track, analyse, display, upload and transmit data related to physical activities or general health. Moreover, they have the same method of use as devices carried during sporting activities or daily life for collecting, processing and sharing various physical data. Finally, the goods are in competition, as both may be used to collect, process and share various body performance data related to sport and general health, and share the same relevant public of people passionate about sport who need a device to process by various means and share data related to sports performance or general health. Therefore, they are similar.

The contested mobile device software applications and computer software applications for measuring, tracking, analysing, displaying, uploading and transmitting data transmitted from multifunctional electronic devices or specialized clothing and clothing accessories worn by users regarding their physical activity, fitness and general health and mobile device software applications and computer software applications that provide users with information and analysis regarding their physical activity, fitness and general health and provide access to an online Union that focuses on physical activity, fitness and general health, in Class 9, are software applications that serve to measure, track, analyse, display, upload and transmit data related to physical activity and general health transmitted, in turn, from electronic devices and clothing accessories. Similarly, they are also applications able to provide data information and analysis regarding physical activity, fitness and general health and even grant access to online communities related to physical activities, fitness and general health. The opponent’s digital cellular phones are telephones, which nowadays may support a variety of other services, such as software applications. The reality of the market is that often phones are provided with, or support the download of, software applications able to measure, track, analyse, display, upload and transmit physical data and provide information on physical activities and access to communities focused on physical activity and general health; they can also interact with a compatible device worn by users. Therefore, the goods at issue may be complementary, as the software application can be used only by means of a data-processing device such as a mobile phone. Moreover, the goods at issue may have the same relevant public of people passionate about sport who need a device compatible with software applications able to process and share data on sports performance and general health and also provide information and access to specific communities. Finally, the goods have the same producer, namely of phones and software applications dedicated to the device. Therefore, they are similar.

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 target the public at large. The degree of attention is average.

3. The signs

	SHINE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The contested sign is a word mark depicting the word ‘SHINE’, understood by the English-speaking customer as, inter alia, the action of emitting light. The earlier trade mark is a figurative mark containing the verbal element ‘SHINE’ – with the same meaning as in the contested sign – in title case letters. Below this, in black title case letters about one-third of the size of the word ‘SHINE’, are the verbal elements ‘BLACK LABEL SERIES’, understood by the English-speaking customer as a series of products sold with and identified by a black label.

The signs at issue have no elements that could be considered clearly more distinctive than other elements.

The contested sign has no element that could be considered more dominant (visually eye-catching) than other elements.

The element ‘SHINE’ in the earlier trade mark is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the verbal element ‘SHINE’, which forms the contested sign and is the first and dominant verbal element of the earlier mark. The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part on the left of the sign (the initial part) the one that first catches the attention of the reader. However, the signs differ in the secondary element, ‘BLACK LABEL SERIES’, of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SHINE’, which is the first and dominant element of the earlier mark. However, the pronunciation differs in the sound of the secondary element, ‘BLACK LABEL SERIES’, of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are similar to an average degree.

Conceptually, the public in the relevant territory will perceive the word ‘SHINE’, present both in the contested sign and as the first and dominant element of the earlier mark as, inter alia, the action of emitting light. However, the signs differ conceptually in the secondary element, ‘BLACK LABEL SERIES’, present only in the earlier mark and understood as a series identified by a black label.

As the signs will be associated with similar meanings, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. 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, other arguments and conclusion

According to the case law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

The relevant public for the goods in questions includes the public at large. The degree of attention is average.

The inherent distinctiveness of the earlier mark considered as a whole is normal. The opponent did not claim enhanced distinctiveness for the earlier mark.

The goods are similar.

The signs are visually, aurally and conceptually similar to an average degree.

The signs differ in the presence of the secondary verbal element, ‘BLACK LABEL SERIES’, in the earlier sign.

However, the marks at issue are visually, aurally and conceptually identical in the verbal element ‘SHINE’, which is first and dominant in the earlier trade mark.

Consequently, the fact that the signs coincide in the only element of the contested mark, which is the dominant element of the earlier mark, makes it impossible to exclude a likelihood of confusion. On the contrary, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, which, as already mentioned, will also link the element the marks have in common, ‘Shine’, from a conceptual point of view. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 409 685. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Andrea VALISA

Karin KUHL

Vít MAHELKA

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.