OPPOSITION No B 2 999 632

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

RCS & RDS S.A., Str. Dr. Staicovici Nr 75 - Forum 2000 Building - Faza I, Et. 2, Sector 5, Bucarest, Romania (applicant), represented by Bermejo & Jacobsen Patentes-Marcas S.L., Av. de Europa 14, 28108 Alcobendas (Madrid), Spain (professional representative).

On 17/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 999 632 is upheld for all the contested services, namely

Class 38: Telecommunications.

Class 41: Entertainment.

2. European Union trade mark application No 17 095 019 is rejected for all the contested services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 095 019 , namely against all the services in Class 38 and some of the services in Class 41. The opposition is based on, inter alia, European Union trade mark No 16 673 171 ‘life’. The opponent invoked Article 8(1)(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.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 14/08/2017.

Earlier European Union trade mark No 4 585 295 was registered on 09/02/2015 and earlier European Union trade mark No 16 673 171 was registered on 13/01/2020. Therefore, the request for proof of use is inadmissible as the earlier rights had not been registered for at least five years at the filing date of the contested mark.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark No 16 673 171.

a) The services

The services on which the opposition is based are, inter alia, the following:

Class 38: Telecommunications.

Class 41: Entertainment.

The contested services are the following:

Class 38: Telecommunications.

Class 41: Entertainment.

Contested services in Class 38

The contested telecommunications is identically contained in the opponent’s list of services.

Contested services in Class 41

The contested entertainment is identically contained in the opponent’s list of services.

b) 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 services found to be identical are directed at the public at large. The degree of attention is considered to be average.

c) The signs

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).

The earlier mark is a word mark. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess. Therefore, it is irrelevant whether the word mark is depicted in upper- or lower-case letters (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43).

The verbal element ‘life’ of both signs is an English word which refers to ‘the quality which people, animals and plants have when they are not dead, and which objects and substances do not have’ (information extracted from Collins English Dictionary on 04/03/2020 at www.collinsdictionary.com). This word will be understood as such throughout the European Union (15/10/2018, T‑444/17, life coins / LIFE et al., EU:T:2018:681, § 52). Since it has no meaning in relation to the relevant services, it is distinctive.

The verbal element ‘DIGI’ of the contested sign could be perceived as the shortened form of ‘digital’ in certain territories, for example in those countries where English and French are understood. It does not have any meaning in other territories, such as those where Polish is spoken. Bearing in mind that the relevant services may be rendered digitally, this is a weak element for the part of the public that understand its meaning and a distinctive element for the remaining part of the public.

The rectangle in the contested sign is non-distinctive and purely decorative as it consists of a simple geometrical shape.

The element ‘Life’ in the contested sign is the dominant element as it is the most eye-catching compared with the element ‘DIGI’, which is depicted in a much smaller font.

Visually, the signs coincide in the distinctive and dominant element in the contested sign ‘LIFE’. However, they differ in the non-dominant (and, for part of the public, weak element) ‘DIGI’ of the contested sign. The signs also differ in the slightly stylised typeface, non-distinctive rectangular frame and colours of the contested sign.

Therefore, taking all the aforementioned into account, as well as the distinctiveness issues for different parts of the territory, the signs are visually at least similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‛LIFE’, present identically in both signs. The pronunciation differs in the sound of the word ‘DIGI’ of the contested sign, which has no counterpart in the contested mark.

Therefore, taking all the aforementioned into account as well as the distinctiveness issues as regards different parts of the territory, the signs are aurally at least similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Considering that both signs contain the concept of ‘LIFE’ as a distinctive element despite the presence of another concept which might be weak for a part of the public, the signs are conceptually at least similar to an average degree.

d) 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 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.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The services at issue are identical. They target the public at large whose level of attention will be average. The earlier mark has a normal degree of distinctiveness.

The marks are visually, aurally and conceptually at least similar to an average degree, since they coincide in the sole, distinctive element that makes up the earlier sign.

In addition, the average consumer only rarely has the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them that they have kept in their mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In this case, the coincidence in the element ‘LIFE’, which is the only element in the earlier mark and the dominant element in the contested sign, is crucial, as well as the fact that the term ‘DIGI’ is weak for a part of the public.

Furthermore, likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse two signs directly, believe that they come from the same undertaking or from economically related ones.

In the present case, it is likely that the earlier mark will be associated by the public with the contested mark, creating an impression that the services originate from the same undertaking or economically linked undertakings. This is because both signs have the abovementioned element ‘LIFE’ in common, which is distinctive to a normal degree, and the contested mark, with its additional non-dominant and, for a part of the public, weak verbal element ‘DIGI’, may represent a new or parallel line of the opponent’s services (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argued that it owns several registrations with the word ‘DIGI’ which coexist with the opponent’s earlier marks.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard, formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Finally, the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution, as there may be different reasons as to why similar signs coexist. For example, there may be different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 673 171. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 16 673 171 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(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

Marianna KONDAS

Victoria DAFAUCE MENENDEZ

Anna ZIOŁKOWSKA

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.