OPPOSITION No B 2 694 803

Ceymsa Audiovisual, S.A., C/Luis I 31 y 33, nave 17, 28031 Madrid, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

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

On 18/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 694 803 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 of European Union trade mark application No 14 991 905 ‘Plus Screen’ (word mark), namely against all the goods in Class 9. The opposition is based on the European trade mark registration No 6 375 729 (figurative mark) and Spanish trade mark registration No 2 435 337 ‘PLUSCREEN’ (word mark). The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier mark was requested by the applicant on 30/01/2019. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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: Projection screens.

The opponent addressed the opposition against all the goods included in Class 9 of the contested sign. After the limitation of the list of goods in that Class made by the applicant on 21/06/2016 and 15/08/2018, the remaining contested goods are the following:

Class 9: Smartphones; display for smartphones; cellular phones, wearable smartphones.

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.

The opponent’s projection screens are devices that consist of a surface and a support structure, which are used for displaying a projected image. These devices are used in combination with projectors of different kinds (e.g. digital, movie, overhead and slide) whose intended purpose is to reflect the light projected on to them in order to show, inter alia, pictures, slides or videos. These screens are made of flexible vinyl material and are not needed for the image to form, but rather, are used to make an image visible, normally on a white or silvered surface. The goods against which the opposition is directed, smartphones; display for smartphones; cellular phones, wearable smartphones, contain a technological component that is not present in the opponent’s projection screens. Therefore, they have a different nature and it is highly unlikely that they will be made by the same manufacturers.

Apart from their different natures, and contrary to the opponent’s observations, the contested goods have no relevant points in common with the opponent’s goods, since they are not used as, or necessarily used in combination with, telephones or smartphones. The connection between a smartphone and the projection screen, provided by the alleged application (‘app’), is made by a receiver that enables the projection of the smartphone content. This connection is not provided by the smartphone in itself. Thus, a complementary relationship cannot be established between the smartphone and the opponent’s goods. They are neither interchangeable or imperative for the use of the other, nor in competition. Furthermore, they do not usually share the same retail outlets. Even if found in large department stores, the goods in comparison would not be placed next to each other. Therefore, the contested smartphones; display for smartphones; cellular phones, wearable smartphones are dissimilar to the opponent’s goods.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered to enjoy a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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 because the goods are obviously not identical.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Aldo BLASI

Cristina SENERIO LLOVET

Vít MAHELKA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.