OPPOSITION No B 2 637 018

Medion AG, Am Zehnthof 77, 45307 Essen, Germany (opponent), represented by Becker & Müller, Turmstr. 22, 40878 Ratingen, Germany (professional representative)

a g a i n s t

SA Lexibook, 2 avenue de Scandinavie, 91953 Courtaboeuf Cedex France

On 28/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 637 018 is partially upheld, namely for the following contested goods:

Class 9: Scientific apparatus and instruments; sound recording apparatus; sound and picture recording apparatus; sound transmitting apparatus; sound reproduction apparatus; portable sound reproducing apparatus; magnetic data media; blank discs; cash registers; computers; software; audio electronic apparatus; communications equipment; video communications apparatus; audio recordings; sound recorders; audio apparatus; audio transmitter units; audio receivers; audio digitisers; audio cable; audio visual recordings; audiovisual apparatus; audio- and video-receivers; digital audio players; digital audio recorders; cabinets for loudspeakers; audio frequency apparatus; speakers [audio equipment]; compact discs [audio-video]; car audio apparatus; audio cable connectors; high fidelity audio apparatus; audio dubbing apparatus; audio switching apparatus; electronic units for transmitting audio signals; downloadable image files; downloadable video recordings; downloadable video recordings featuring music; downloadable video game programs; downloadable interactive entertainment software for playing video games; peripherals adapted for use with computers; laptop computers; tablet computers; personal digital assistants; electronic publications, downloadable; speakers for portable media players; remote controls; telephone apparatus; cell phones; digital phones; radiotelephones; digital cellular phones; telephone headsets; smartphones; smartphones in the shape of a watch; wireless headsets for smartphones; covers for smartphones; cases for smartphones; telephone recorders; electrical recorders; film recorders; dvd recorders; mp3 players; docking stations for mp3 players; digital music downloadable provided from mp3 internet web sites; headsets; stereo headphones; telephone receivers; headphone amplifiers; telephone earpieces; in-ear headphones; headphone-microphone combinations; headsets for use with computers; headsets for mobile telephones; music headphones; personal headphones for sound transmitting apparatuses; wireless headsets for use with mobile telephones; two-way plugs for headphones; communications head sets; camcorders; cinematographic cameras; TV sets; electronic circuits; disks, magnetic; optical discs; compact discs [read-only memory]; prerecorded CD-ROMs; electronic desk calculators; musical instrument amplifiers; docking stations for digital music players; machine readable computer programs for use in the reproduction of music; electric and electronic effects units for musical instruments; computer software for processing digital music files; pick-ups for electrical musical instruments; integrated circuit memory cards for use in playing electronic musical instruments; games software; software programs for video games; video game programs; video game discs; computer joysticks; computer game discs; electronic game programs; interactive video game programs; downloadable electronic game programs; video games on disc [computer software]; computer programs for video and computer games; computer chipsets; interactive computer game programs; computer programs for pre-recorded games; interactive multimedia computer game programs; recorded computer game programs; downloadable computer game programs; computer software that permits games to be played; loudspeaker systems; speakers for computers; loudspeakers with built in amplifiers; speakerphones; tweeters; radio receivers; sound amplifying receivers; fibre optic receptors; audio devices and radio receivers; radio receivers and transmitters; wireless receivers; radio transceivers; video receivers; computer hardware; Ethernet repeaters; computers and computer hardware; musical video recordings; musical sound recordings; downloadable musical sound recordings; series of musical sound recordings; electric and electronic musical effects equipment; computer programs for processing digital music files; video screens; video cards; video processors; video transmitters; video amplifying apparatus; video devices; pre-recorded videos; interactive video apparatus; digital video recorders; colour video processors; video camera stands; lenses for video cameras; voice recognisers; computer systems; interactive computer systems; video imaging systems; computer operating systems; electrical receivers; stereo receivers; stereophonic apparatus; electronic game software for wireless devices; application software for wireless devices; power cables; connection cables; telephone wires; USB cables; electric cables; electronic cables; cable modems; ethernet cables; ignition cables; computer cabling; microphone cables; telecommunications cables; battery chargers; remote controls for stereos; docking stations for smartphones; DVD players; DVD drives; portable DVD players; digital televisions; remote controls for televisions; screens; computer screens.

Class 16: Electronic typewriters; office requisites, except furniture.

Class 28: Sporting articles and equipment; toys, games, playthings and novelties; toy telephones.

2. European Union trade mark application No 14 650 816 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 some of the goods of European Union trade mark application No 14 650 816, as listed below. The opposition is based on European Union trade mark registration No 4 585 295. 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 7: Tin openers (electric); electric generators; electric hammers; electric motors (not for land vehicles); fruit presses (electric) for household purposes; electromechanical apparatus for preparing beverages; electric hand drills; glue guns, electric; electric food processors; knives (electric); blenders, electric, for household purposes; electromechanical food preparation machines; machines and apparatus for polishing (electric); fruit presses, electric; machines and apparatus for cleaning (electric) for household purposes; electric beaters; electric shears; whisks, electric for household purposes; electric shoe polishers; machines and apparatus (electric) for carpet shampooing; food processors (electric); grinders/crushers (electric) for household purposes; coffee grinders (other than hand operated); mills for household purposes (other than hand-operated); knife grinders; vacuum cleaners; bags for use in vacuum cleaners; vacuum cleaner attachments for disseminating perfumes and disinfectants; washing machines; bread cutting machines.

Class 8: Flat irons (non-electric); non-electrical tin openers; egg slicers (non-electric); irons (non-electric hand tools); depilation appliances (electric and non-electric); hand implements for hair curling (non-electric); Depilation appliances, electric and non-electric; Hair clippers, electric and non-electric; cheese slicers (non-electric); manicure sets, electric; manicure sets; nail files, electric; fingernail polishers (electric or non-electric); nail clippers (electric or non-electric); pizza cutters (non-electric); razor cases; razors, electric and non-electric beard-clipping machines; gimlets (hand tools); milling cutters (hand tools); hand implements for hair curling (non-electric); hand tools (hand-operated).

Class 9: Magnetic encoders; magnetic data carriers; optical data media; data-processing apparatus; optical character readers; writing and/or reading implements (data processing); magnetic data carriers; mouse (data processing equipment); optical data carriers; disc exchangers (for computers); scanners [data processing equipment]; memories for data processing installations, processors (central processing units); compact discs (read-only memory); compact discs (audio-video); computers; recorded computer programs; computer software [recorded]; games programs for computers; computer operating programs (recorded); computer peripheral devices; computer programs (downloadable); computer keyboards; printers for use with computers; wrist rests for use with computers; interfaces [for computers]; laptops (computers); floppy disc drives; monitors for computers; monitors (computer hardware), navigation apparatus (computer programs) for vehicles (onboard computers); notebooks (computers); computer peripheral devices; computer programs; computer software (recorded); computer game programs; keyboards for computers; make-up removing appliances, electric; grids for electric accumulators, chargers for electric accumulators, plates for electric accumulators, electric accumulators; alarm bells, electric; connection boxes (electricity), display apparatus (electric); electronic display panels; batteries, electric; flat irons, electric; theft prevention installations, electric; electric wires; electrodynamic apparatus for the remote control of railway points; electric cables; electric capacitors; electromagnetic coils; electronic publications [downloadable]; electronic pens [visual display units]; discharge tubes, electric, other than for lighting; anti-interference devices (electricity); batteries, electric, for vehicles; electrodynamic signal remote control apparatus; photocopiers (photographic, electrostatic, thermic); inductance coils (electricity); electric devices for attracting and killing insects; wire connectors (electricity); door bells (electric); chargers for electric batteries; hair-curlers, electrically heated; welding apparatus, electric; soldering irons, electric; solenoid valves (electromagnetic switches); measuring devices, electric; electrically heated hair curlers; locks (electric); transmitters of electronic signals; electronic security tags for goods; socks, electrically heated; electronic pens (visual display units); buzzers electric; electronic pocket translators; electronic organisers; electric door bells; door openers, electric; door closers, electric; monitoring apparatus, electric; compact discs (audio-video); receivers (audio and video); tone arms for record players; head cleaning tapes [recording]; tone arms for record players; sound recording apparatus; tape-recorders; sound locating instruments; sound carriers; sound transmitting apparatus; sound amplifiers; sound-reproducing apparatus; amusement apparatus adapted for use with television receivers; temperature indicators; video telephones; loudspeaker boxes; letter scales; compact disc players; television apparatus; telephone apparatus; motion picture cameras; film cutting apparatus; radiotelephony sets; signalling bells; altimeters; cassette players; compasses; headphones; laser pointers (luminous pointers); microphones; mobile telephones; modems; navigational instruments; lenses (optics); mouse pads (mouse mats); plotters; projection apparatus; projection screens; slide projectors, radios; smartcards (cards with integrated circuits); video games adapted for use with television receivers only; walkie talkies; video cameras; video recorders; safety helmets for sports; none of the aforesaid goods being or featuring educational and/or entertainment content intended for general circulation; the aforementioned goods exclusive of board game programs for computers, computer board games and video board games for use with television receivers only, electronic board games, video board games for a connection to a television, board games software, cards/discs/tapes/wires/circuits for bearing or bearing board games and/or games software and/or arcade board games, board gaming machines including slot machines.

Class 10: Electric acupuncture apparatus; electrodes for medical use; electrocardiographs; belts, electric, for medical purposes; heating cushions, electric, for medical purposes; thermoelectric compresses (surgery), thermal compresses (electric) for surgical purposes; electrical dental apparatus; aerosol dispensers for medical purposes; sphygmomanometers; hot air apparatus (therapeutic); lamps for medical purposes; massage apparatus.

Class 11: Electric heaters for baby bottles; electric lights for Christmas trees; pressure cookers (autoclaves), electric; electrically heated carpets; discharge tubes, electric, for lighting; sockets for electric lights; baby bottle warmers (electric); electric deep fryers; footmuffs, electrically heated; footwarmers (electric or non-electric); electric light bulbs; filaments for electric lamps; heating filaments (electric); electric heating apparatus; yoghurt-makers, electric; coffee filters, electric; electric coffee percolators; electric coffee percolators; cooking utensils (electric); sockets for electric lamps; filaments for electric lamps; electric lamps; electric discharge tubes for lighting; electric fans for personal use; radiators, electric; electric pressure cookers; electrically heated carpets; waffle irons, electric; electric laundry dryers; kettles (electric); flashlights (torches); ice machines and apparatus; bicycle lights; freezers, refrigerators; air-conditioning apparatus; refrigerating containers; microwave apparatus (cooking apparatus), warming plates; stoves; torches.

Class 16: Paper tapes and cards for the recording of computer programs; inking ribbons for computer printers; paper tapes and cards for the recording of computer programs; paper tapes and cards for recording computer programs; credit card printing apparatus, non-electric; pencil sharpeners (electric or non electric); pencil sharpeners (electric or non-electric); electrocardiograph paper; typewriters (electric or non-electric); pointers (non-electronic); none of the aforesaid goods being or featuring educational and/or entertainment content intended for general circulation.

Class 28: Stationary exercise bicycles; body-building apparatus; discuses for sports; kites; skating boots with skates attached; remote controlled vehicles; model vehicles (miniature); badminton sets; paragliders; appliances for gymnastics; dumb-bells; inline skates; machines for physical exercises; skateboards; tables for indoor football.

Class 42: Computer programming; conversion of data or documents from physical to electronic media; hiring out data-processing equipment; recovery of computer data; updating of computer software; computer consultancy; copying of computer programs; updating of computer software; computer software design; rental of computer software; consultancy in the field of computers; recovery of computer data; installation of computer programs, maintenance of computer software; computer systems design; systems analysis; design of computer systems; computer software design; design of computer systems; installation of computer programs; conversion of computer programmes and data (other than physical alteration); copying of computer programs; computer software rental; maintenance of computer software; recovery of computer data; conversion of data or documents from physical to electronic media; design and maintenance of websites for third parties.

The contested goods are the following:

Class 9: Scientific apparatus and instruments; sound recording apparatus; sound and picture recording apparatus; sound transmitting apparatus; sound reproduction apparatus; portable sound reproducing apparatus; magnetic data media; blank discs; cash registers; computers; software; audio electronic apparatus; communications equipment; video communications apparatus; audio recordings; sound recorders; audio apparatus; audio transmitter units; audio receivers; audio digitisers; audio cable; audio visual recordings; audiovisual apparatus; audio- and video-receivers; digital audio players; digital audio recorders; cabinets for loudspeakers; audio frequency apparatus; speakers [audio equipment]; compact discs [audio-video]; car audio apparatus; audio cable connectors; high fidelity audio apparatus; audio dubbing apparatus; audio switching apparatus; electronic units for transmitting audio signals; downloadable image files; downloadable video recordings; downloadable video recordings featuring music; downloadable video game programs; downloadable interactive entertainment software for playing video games; peripherals adapted for use with computers; laptop computers; tablet computers; personal digital assistants; electronic publications, downloadable; speakers for portable media players; remote controls; telephone apparatus; cell phones; digital phones; radiotelephones; digital cellular phones; telephone headsets; smartphones; smartphones in the shape of a watch; wireless headsets for smartphones; covers for smartphones; cases for smartphones; telephone recorders; electrical recorders; film recorders; DVD recorders; MP3 players; docking stations for MP3 players; digital music downloadable provided from mp3 internet web sites; headsets; stereo headphones; telephone receivers; headphone amplifiers; telephone earpieces; in-ear headphones; headphone-microphone combinations; headsets for use with computers; headsets for mobile telephones; music headphones; personal headphones for sound transmitting apparatuses; wireless headsets for use with mobile telephones; two-way plugs for headphones; communications head sets; camcorders; cinematographic cameras; TV sets; electronic circuits; disks, magnetic; optical discs; compact discs [read-only memory]; prerecorded CD-ROMs; microscopes; electron microscopes; electronic desk calculators; musical instrument amplifiers; docking stations for digital music players; machine readable computer programs for use in the reproduction of music; electric and electronic effects units for musical instruments; computer software for processing digital music files; pick-ups for electrical musical instruments; integrated circuit memory cards for use in playing electronic musical instruments; games software; software programs for video games; video game programs; video game discs; computer joysticks; computer game discs; electronic game programs; interactive video game programs; downloadable electronic game programs; video games on disc [computer software]; computer programs for video and computer games; computer chipsets; interactive computer game programs; computer programs for pre-recorded games; interactive multimedia computer game programs; recorded computer game programs; downloadable computer game programs; computer software that permits games to be played; loudspeaker systems; speakers for computers; loudspeakers with built in amplifiers; speakerphones; tweeters; radio receivers; sound amplifying receivers; fibre optic receptors; audio devices and radio receivers; radio receivers and transmitters; wireless receivers; radio transceivers; video receivers; computer hardware; ethernet repeaters; computers and computer hardware; musical video recordings; musical sound recordings; downloadable musical sound recordings; series of musical sound recordings; electric and electronic musical effects equipment; computer programs for processing digital music files; video screens; video cards; video processors; video transmitters; video amplifying apparatus; video devices; pre-recorded videos; interactive video apparatus; digital video recorders; colour video processors; video camera stands; lenses for video cameras; voice recognisers; computer systems; interactive computer systems; video imaging systems; computer operating systems; electrical receivers; stereo receivers; stereophonic apparatus; electronic game software for wireless devices; application software for wireless devices; power cables; connection cables; telephone wires; USB cables; electric cables; electronic cables; cable modems; ethernet cables; ignition cables; computer cabling; microphone cables; telecommunications cables; battery chargers; remote controls for stereos; docking stations for smartphones; DVD players; DVD drives; portable DVD players; digital televisions; remote controls for televisions; screens; computer screens.

Class 16: Electronic typewriters; office requisites, except furniture.

Class 28: Sporting articles and equipment; toys, games, playthings and novelties; toy telephones.

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:

1. The following goods are identical to the opponent’s goods:

Sound recording apparatus; sound transmitting apparatus; sound reproduction apparatus; computers and computer hardware and (computer) software (recorded), software, computers, compact discs [audio-video]; electronic publications [downloadable]; telephone apparatus, electric cables equally appear on both lists of goods.

The contested blank discs, compact discs [audio-video], optical discs; compact discs [read-only memory]; prerecorded CD-ROMs are synonyms and thus are identical to the opponent’s optical data carriers.

The contested scientific apparatus and instruments includes, as a broader category, the opponent’s measuring devices, electric. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested magnetic data media, disks, magnetic are included in the broad category of the opponent’s magnetic data carriers.

Laptop computers; tablet computers, personal digital assistants, computer systems, interactive computer systems, cash registers, electronic desk calculators are included or overlap with in the broad category of the opponent’s computers.

Digital televisions, TV sets, remote controls, remote controls for televisions are included in or overlap with the opponent’s television apparatus.

Audio cable connectors, power cables; connection cables; telephone wires; USB cables; electronic cables; ethernet cables; ignition cables; audio cable; computer cabling; microphone cables; telecommunications cables are included in the broad category of the opponent’s electric cables.

Cable modems are included in the opponent’s modems.

Speakers for portable media players, telephone headsets, wireless headsets for smartphones, headsets; stereo headphones; telephone receivers; headphone amplifiers; telephone earpieces; in-ear headphones; headphone-microphone combinations; headsets for use with computers; headsets for mobile telephones; music headphones; personal headphones for sound transmitting apparatuses; wireless headsets for use with mobile telephones; two-way plugs for headphones; communications head sets, loudspeaker systems; speakers for computers; loudspeakers with built in amplifiers; speakerphones; tweeters; radio receivers; sound amplifying receivers; fibre optic receptors; audio devices and radio receivers; radio receivers and transmitters; wireless receivers; radio transceivers; video receivers, musical instrument amplifiers, MP3 players, DVD players; DVD drives; portable DVD players are included in the opponent’s sound-reproducing apparatus.

Cell phones; digital phones; radiotelephones; digital cellular phones; smartphones; smartphones in the shape of a watch fall into the broad category of the opponent’s mobile telephones.

Camcorders; cinematographic cameras overlap with the opponent’s motion picture cameras and video cameras and the broad categories cannot be dissected.

The contested peripherals adapted for use with computers monitors (computer hardware), screens; computer screens, computer joysticks are included in or overlap with the opponent’s computer peripheral devices.

Telephone recorders; electrical recorders; film recorders; DVD recorders are included in the broad category of the opponent’s sound recording apparatus.

Ethernet repeaters are included in the broad category of the opponent’s transmitters of electronic signals.

The contested downloadable video game programs; downloadable interactive entertainment software for playing video games, machine readable computer programs for use in the reproduction of music; computer software for processing digital music files, video game discs; games software; software programs for video games; video game programs, computer game discs; electronic game programs; interactive video game programs; downloadable electronic game programs; video games on disc [computer software]; computer programs for video and computer games; interactive computer game programs; computer programs for pre-recorded games; interactive multimedia computer game programs; recorded computer game programs; downloadable computer game programs; computer software that permits games to be played; computer programs for processing digital music files, electronic game software for wireless devices, application software for wireless devices, electronic game software for wireless devices; computer operating systems are included in or overlap with the broad category of the opponent’s computer software (recorded).

The contested sound recording apparatus; portable sound reproducing apparatus; audio electronic apparatus; communications equipment; video communications apparatus; audio recordings; sound recorders; audio apparatus; audio transmitter units; audio receivers; audio digitisers; audio visual recordings; audiovisual apparatus; audio- and video-receivers; digital audio players; digital audio recorders; cabinets for loudspeakers; audio frequency apparatus; speakers [audio equipment]; car audio apparatus; high fidelity audio apparatus; audio dubbing apparatus; audio switching apparatus; electronic units for transmitting audio signals; stereo receivers; stereophonic apparatus, remote controls for stereos fall into the broad categories of the opponent’s sound recording apparatus; sound transmitting apparatus; sound-reproducing apparatus.

2. The following contested goods are similar to the opponent’s goods:

Electronic circuits, computer chipsets are similar to the opponent’s computers as they coincide in producers, distribution channels, and they are complementary.

The contested covers for smartphones; cases for smartphones are similar to the opponent’s mobile telephones, since they can coincide in producers and distribution channels and are complementary.

The contested downloadable image files; downloadable video recordings; downloadable video recordings featuring music, digital music downloadable provided from mp3 internet web sites, musical video recordings; musical sound recordings; downloadable musical sound recordings; series of musical sound recordings are similar to the opponent’s electronic publications [downloadable] given that they have the same purpose and nature. They can coincide in producer, end user and distribution channels.

Finally, the contested picture recording apparatus, docking stations for mp3 players; docking stations for digital music players; docking stations for smartphones, electric and electronic effects units for musical instruments; pick-ups for electrical musical instruments; integrated circuit memory cards for use in playing electronic musical instruments; electric and electronic musical effects equipment, video screens; video cards; video processors; video transmitters; video amplifying apparatus; video devices; pre-recorded videos; interactive video apparatus; digital video recorders; colour video processors; video camera stands; lenses for video cameras; voice recognisers; video imaging systems; electrical receivers; battery chargers; remote controls for stereos are similar to the opponent’s sound recording apparatus; sound transmitting apparatus; sound-reproducing apparatus. In the sense that all the contested goods are audio-visual instruments, accessories and devices, they can coincide in producer, end user and distribution channels, and target the same public.

3. The following contested goods are dissimilar to the opponent’s goods:

Microscopes; electron microscopes are dissimilar to the goods and services covered by the earlier mark in Classes 7, 8, 9, 10, 11, 16, 28, 42. These goods have a very specific purpose, i.e. to produce a much larger view of very small objects so that they can be seen clearly. These are specialised goods which differ from the opponent’s goods and services in their nature, purpose, methods of use, distribution channels and points of sale. They are neither complementary nor in competition, and are not likely to be produced or provided by the same kinds of companies.

Contested goods in Class 16:

Electronic typewriters are identically included in both lists.

The contested office requisites, except furniture includes, as a broader category, the opponent’s pencil sharpeners (electric or non electric), pencil sharpeners (electric or non-electric). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 28:

The contested sporting articles and equipment includes, as a broad category, the opponent’s badminton sets or appliances for gymnastics. Once again, since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The same applies to the contested toys, games, playthings and novelties, which include as broad categories the opponent’s kites; remote controlled vehicles; model vehicles (miniature); tables for indoor football. As these goods cannot be filtered from the applicant’s broad categories they must be held identical to them.

The contested toy telephones are similar to the opponent’s model vehicles (miniature), tables for indoor football as the opponent’s goods include playthings, toys, which are sold via the same distribution channels, to the same public, and can be expected to be manufactured by the same undertakings.

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 identical or similar, electronics, recording apparatus, their accessories, electric typewriters, office requisites and sporting articles are directed both at the public at large and at the professional public, as far as some specialised goods such as cinematographic cameras or computer chipsets are concerned. The attentiveness of the relevant public will thus vary from average to high, especially in the context of specialised or high-priced goods.

3. The signs

LIFE	American Life
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 given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are word marks; the earlier sign is “LIFE” and the contested sign is “American Life”. In the case of word marks, it is worth pointing out that protection is sought for the word as such and not its written form. The fact that the earlier mark is written in upper case letters whereas the contested mark is in title case letters is, therefore, irrelevant.

It should be noted from the outset that the term “LIFE” present in both signs will be perceived by the English speaking relevant public as a reference to existence, a living person or being, or the amount of time that something is active or functioning. Since this term has no meaning in relation to the goods at hand, its distinctiveness is normal.

The term “American” in the contested sign will be understood as relating to the American continent or to the United States of America, its inhabitants, or their form of English. Although being an English term, it is likely to be understood throughout the relevant territory given its widespread use or due to the similarity of this word to equivalents in other languages of the EU (Danish amerikansk, amerikaner; Dutch Amerikaan, Amerikaans; French, américain; German amerikanisch, Amerikaner; Italian, Spanish and Portuguese, americano; Swedish, amerikannsk, amerikan; Latvian amerikānis; Hungarian amerikai, etc.)

Given the technologically developed status of the United States of America, it is reasonable to assume that such a name may, in the mind of the relevant public, designate the geographical origin or the targeted geographical market of the category of goods; as such, the term is of weak distinctive character.

Visually and aurally, the signs coincide in “LIFE” and differ in the contested sign’s additional element “American”. Bearing in mind that the earlier sign is entirely included in the contested sign, and differentiated only by a weak additional element, the signs are visually and aurally similar to a high degree.

The same applies to the conceptual comparison: the signs coincide in the concept of existence, which is only nuanced by the contested sign’s adjective referring to a particular geographical origin. Therefore, the signs are conceptually highly similar.

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 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

Moreover, account is taken of the fact that 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).

This will apply even to highly attentive consumers and especially to the public at large if they are confronted, on identical or similar goods, with a sign that includes the earlier sign in its entirety. The contested sign’s differentiating element is weak and will thus have a correspondingly limited impact on consumers.

Furthermore, it constitutes frequent practice nowadays for companies to make small variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modernised version of the mark.

In the present case, given that the earlier mark is entirely contained in the contested sign with an adjective “American” referring to a geographical area, it is likely that consumers will perceive the contested sign as a variation of the earlier mark, such as a version indicating the production origin or a version designed for a particular geographic market.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the opponent’s European Union trade mark registration No 4 585 295.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall 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

María Clara IBÁÑEZ FIORILLO

Marianna KONDAS

Ric WASLEY

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.