OPPOSITION Nо B 3 049 428

 

Polar Electro Oy, Professorintie 5, 90440 Kempele, Finland (opponent), represented by Kolster Oy Ab, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative) 

 

a g a i n s t

 

Polar Squad Oy, Kaisaniemenkatu 1b A, 00100 Helsinki, Finland (applicant), represented by Boco Ip Oy Ab, Itämerenkatu 5, 00180 Helsinki, Finland (professional representative).

On 12/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 049 428 is partially upheld, namely for the following contested goods and services:

 

	Class 9: All the contested goods in this Class.   Class 35: All the contested services in this Class, with the exception of: compilation of information into computer databases; computerized file management; all of the above services in relation to strategic business consulting with an emphasis on data management solutions.   Class 41: All the contested services in this Class.
2.	European Union trade mark application No 17 631 524 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 09/04/2018, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 631 524 ‘Polar Squad’ (word mark). Specifically, pursuant a limitation filed by the applicant on 28/04/2021 the opposition is against all the goods and services in Classes 9, 35 and 41. The opposition is based on, inter alia, European Union trade mark registration No 14 973 986, ‘POLAR pioneer of wearable sports technology’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

  

 

CEASING OF EXISTENCE OF THE EARLIER RIGHTS

 

According to Article 46(1)(a) EUTMR, within a period of three months following the publication of an EUTM application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

 

(a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

[…].

 

Furthermore, according to Article 8(2) EUTMR, ‘earlier trade mark’ means:

 

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking account, where appropriate, of the priorities claimed in respect of the marks referred to in Article 8(2)(a) EUTMR; 

 

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

 

(iii) trade marks which are well known in a Member State.

 

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

 

In this respect, if, in the course of the proceedings, the earlier right ceases to exist (e.g. because it has been declared invalid or it has not been renewed), the final decision cannot be based on it. The opposition may be upheld only with respect to an earlier right that is valid at the moment when the decision is taken. The reason why the earlier right ceases to have effect does not matter. Since the EUTM application and the earlier right that has ceased to have effect cannot coexist any more, the opposition cannot be upheld to this extent. Such a decision would be unlawful (13/09/2006, T‑191/04, Metro, EU:T:2006:254, § 33-36).

  

In the present case, the opposition is based on, inter alia, the following earlier trade marks:

 EUTM No 7 450 984 ‘POLAR CARDIO COACHING’ filed on 10/12/2008 and expired on 10/12/2018;

 EUTM No 8 931 099 ‘Polar Active’ filed on 05/03/2010 and expired on 05/03/2020.

 

As the above trade mark registrations expired and were not renewed within the due deadline or within the further six months following the day on which protection ended, it must be concluded that these registrations has ceased to exist and cannot be considered ‘earlier trade marks’ within the meaning of Article 8(2) EUTMR.

Consequently, the opposition must be rejected as unfounded as far as it is based on these earlier marks.

 

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 registration No 14 973 986 for the word mark ‘POLAR pioneer of wearable sports technology’.

 

a) The goods and services

 

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

Class 9: Precision balances; Computer software applications for supervision of weight reduction; Wrist devices, monitors, testers, sensors peripheral devices and/or systems used for measuring and/or recording different physiological data, biosignals and/or exercise parameters, namely blood oxygenation, heart rate, heart rate variability, electrocardiogram, blood pressure, ventilation, body temperature, body flexibility, body strength, body motion, skin conductivity, blood glucose, lactic acid and/or recording, time, distance, speed, acceleration, altitude, environmental temperature, humidity and purity; Computer software for the synchronization of exercise data between a remote station or device and a fixed remote station or device; Computer programs for accessing, browsing and searching online exercise databases; MP3 and other digital format audio players; mobile digital electronic devices for exercise user, namely electronic heart rate recorders (other than for medical use), global positioning devices; wireless interfaces and mobile devices for communicating physiological data and/or exercise data; integrated circuit cards and/or integrated circuits for measuring physiological and/or exercise data; electronic equipment for sensing data, for providing training instructions and for displaying data obtained during exercise; wearable activity trackers and/or wearable computers in conjunction with biosignal detection; computer interfaces, software and/or firmware for the aforementioned goods.

Class 10: Wrist devices, monitors, testers, sensors and/or peripheral devices used for measuring and/or recording different physiological data and/or biosignals, namely blood oxygenation, heart rate, heart rate variability, electrocardiogram, blood pressure, ventilation, body temperature, body flexibility, body strength, body motion, skin conductivity, blood glucose, lactic acid and/or recording, time, distance, speed, acceleration, altitude, environmental temperature, humidity and purity, all for medical purposes.

Class 14: Electronic clocks and watches.

Class 25: Clothing, wearable activity trackers, headgear and/or band structures, detachable to body, with biosignal and/or body motion and/or location detection.

Class 28: Game devices and/or systems utilizing biosignal and/or body motion data.

Class 35: Providing information on shopping opportunities provided by others; providing a consumer guide to a wide variety of web sites in the fields of recreation, business, living, shopping, the home, and the Internet; marketing a variety of services provided by others by disseminating information on a global computer network.

Class 38: Telecommunication access services to exercise databases; delivery of messages by electronic transmission.

Class 41: Educational and instruction services relating to exercise activities, coaching services for exercise activities; Coaching services for sporting activities; Education services relating to customer satisfaction.

Class 44: Supervision of weight reduction programs; Weight-reduction programs (Planning of -); Services for the planning of weight reduction programs; Providing health information.

Pursuant a limitation filed by the applicant on 28/04/2021, the contested goods and services are the following:

Class 9: Data processing programs, Computer programmes for data processing; Data processing systems; Software; Computer operating programs; Computer software for business purposes; Communication software.

Class 35: Business promotion; Professional business consultancy; Business planning consultancy; Business consultancy and advisory services; Advisory services relating to data processing; Providing business management start-up support for other businesses; Compilation of information into computer databases; Computerized file management; Consultancy relating to the establishment and running of businesses; Evaluations relating to commercial matters; Management advice; Business consultancy relating to the administration of information technology; Assistance and advice regarding business management; Business management and organization consultancy; Business planning services; Business project management; all of the above services in relation to strategic business consulting with an emphasis on data management solutions.

Class 41: Arranging of seminars relating to business; Computer education training services; Organising of business training concerning topics relating to automation, continuous development, integration of processes between software development and IT teams as well as relating to how to build, test and release software faster and more reliably; organization of business training concerning development of factors and features relating to the launch and production of products and services as well as relating to the publication of updates to products and services; none of the above in relation to exercise activities, sporting activities or customer satisfaction. 

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

  

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

  

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 data processing programs, computer programmes for data processing; software; computer operating programs; computer software for business purposes; communication software includes, as  broader categories, or overlap with, the opponent’s computer software for the synchronization of exercise data between a remote station or device and a fixed remote station or device, which are software aimed to process and communicate exercise data. 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 contested data processing systems include, as broader category, the wearable computers in conjunction with biosignal detection. 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 services in Class 35 

The contested business promotion; all of the above services in relation to strategic business consulting with an emphasis on data management solutions are activities that belongs to the advertising, marketing and promotional services. These services overlap with the opponent’s marketing a variety of services provided by others by disseminating information on a global computer network which are also belonging to the field of advertising, marketing and promotional services. Therefore, they are identical.

The contested professional business consultancy; business planning consultancy; business consultancy and advisory services; advisory services relating to data processing; providing business management start-up support for other businesses; consultancy relating to the establishment and running of businesses; evaluations relating to commercial matters; management advice; business consultancy relating to the administration of information technology; assistance and advice regarding business management; business management and organization consultancy; business planning services; business project management; all of the above services in relation to strategic business consulting with an emphasis on data management solutions are linked with the opponent’s marketing a variety of services provided by others by disseminating information on a global computer network. Indeed, the opponent’s services might consist in providing others with assistance in the sale of services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity whereas the contested one comprise a wide range of business consultancy, advisory and management activities. These services are similar to a low degree to as they have the same purpose, namely to facilitate running a successful business. They may also have the same providers and relevant public.

The contested compilation of information into computer databases; computerized file management; all of the above services in relation to strategic business consulting with an emphasis on data management solutions are very specific services related to data processing, systemization and management. These services do not have anything in common with any of the opponent’s goods and services. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

Contested services in Class 41

The contested arranging of seminars relating to business; computer education training services; organising of business training concerning topics relating to automation, continuous development, integration of processes between software development and it teams as well as relating to how to build, test and release software faster and more reliably; organization of business training concerning development of factors and features relating to the launch and production of products and services as well as relating to the publication of updates to products and services; none of the above in relation to exercise activities, sporting activities or customer satisfaction are at least similar with the opponent’s education services relating to customer satisfaction. Although the contested services exclude the opponent’s ‘customer satisfaction’ activities still the services at stake have the same nature. They usually coincide in providers such as educational institutions, relevant public and distribution channels.

 

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 goods and services found to be identical or similar in various degrees are directed at the public at large and as well as business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialized nature, or terms and conditions of the goods and services purchased.

 

c) The signs

 

POLAR pioneer of wearable sports technology	Polar Squad
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 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.

The signs verbal elements are in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for which the signs share conceptual similarities.

The sign’s common initial element ‘POLAR’ will be perceived by the relevant consumers with the meaning of ‘situated at or near, coming from, or relating to either of the earth's poles or the area inside the Arctic or Antarctic Circles’. This coinciding verbal element is distinctive to a normal degree, since its meaning is not directly related to the relevant goods and services in a clear way that could impair its distinctiveness.

The earlier mark’s verbal element ‘pioneer of wearable sports technology’ will be perceived as a slogan informing the consumers that the opponent is one of the first involved in the field of wearable sport technology. Consequently, this element is weak insofar as it refers to the relevant goods in Class 9 (i.e. wearable apparatus and software related to exercise) and allude to the business field of the relevant services in Class 35 and 41 (e.g. informing that the marketing services in Class 35 or the customer services education activities in Class 41 are related to the wearable sports technology field, where the opponent is a pioneer).

The contested sign’s additional element ‘squad’ will be perceived with the meaning of a small group of people engaged in a common pursuit. This meaning is not clearly related to the relevant goods and services. Therefore, it is distinctive to a normal degree.

In the assessment of the visual and aural similarity of the marks in question it has to be also borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

 

Visually, the signs coincide in the verbal element ‘POLAR’ whereas they differ in the earlier mark’s element ‘pioneer of wearable sports technology’ and in the contested sign’s component ‘squad’.

Therefore, taking into account the above principles and assessment on the degree of distinctiveness and relevance of the sign’s verbal element they are visually similar to an average degree.

Aurally, the signs coincide in the sound of the verbal element ‘POLAR’ whereas they differ in the earlier mark’s element ‘pioneer of wearable sports technology’ and in the contested sign’s component ‘squad’.

However, due to the reduced distinctiveness and length of the earlier mark’s element ‘pioneer of wearable sports technology’ it is likely that the relevant public will not pronounce this component (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342 and 11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44).

 

Therefore, the signs are aurally similar to an above average degree.

  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the degree of distinctiveness of their elements. In specific, the signs coincide in the distinctive meaning of ‘POLAR’ whereas they differ in that of the earlier mark’s element ‘pioneer of wearable sports technology’ and in the contested sign’s component ‘squad’.

Consequently, the signs are conceptually 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 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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/services covered are from the same or economically linked undertakings.

In the present case the goods and services have been found partly identical, partly similar in various degrees and partly dissimilar. They target both the general and professional consumers. The degree of attention may vary from average to high. The degree of distinctiveness of the earlier mark is also average.

The signs have been found visually and conceptually similar to an average degree whereas aurally similar to an above than average degree. In specific, the earlier marks most distinctive element is entirely reproduced in the same initial position within the contested application, where it detains an independent distinctive role.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or at least similar goods and services are likely to think that they come from the same undertaking or from economically linked undertakings. This, despite the high degree of attention paid in relation to some of them.

As regards the services that are similar to a low degree only, it must be kept in mind that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).In the present case, the degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between some of the services. This, despite the high degree of attention paid in relation to some of them.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The Opposition Division cannot concur with the applicant’s argument stating that since there are several trade marks containing the element ‘POLAR’ consumers ‘would have a keen eye on the differences between these marks’.

 

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘POLAR’. Under these circumstances, the applicant claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

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

 

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

The opponent has also based its opposition on the following earlier trade marks:

  

 EUTM registration No 12 866 331, ‘POLAR SMART COACHING’;

 EUTM registration No 16 498 818, ‘Polar H10’;

 EUTM registration No 12 343 919, ‘POLAR FLOW’;

 EUTM registration No 13 632 013, ‘POLAR BALANCE’;

 EUTM registration No 15 528 581, ‘POLAR M600’;

 EUTM registration No 15 528 664, ‘POLAR M200’;

 EUTM registration No 5 837 182, ‘POLAR LISTEN TO YOUR BODY’;

 EUTM registration No 12 048 311,  ;

 EUTM registration  No 12 343 811, ‘POLAR LOOP’;

 EUTM registration  No 16 780 132, ‘POLAR SLEEP PLUS’;

 EUTM registration (EU) No 3 717 238,  .

 

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

 

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Félix ORTUÑO LÓPEZ

Aldo BLASI

Chiara BORACE

 

 

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.