OPPOSITION No B 3 074 988

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

Life Zero Entertainment S.L.U., Avenida Ciudad de Soria, La Terminal Etopía 8, 4º e B10, 50003 Zaragoza, Spain (applicant), represented by Audens Legal SLP, Marqués de Cubas 12 5ºC, 28014 Madrid, Spain (professional representative).

On 28/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 074 988 is upheld for all the contested goods and services, namely

Class 9: Games software; Computer software, recorded; Computer software applications, downloadable; Downloadable graphics for mobile phones.

Class 41: Entertainment information; Entertainment services; Game services provided on-line from a computer network.

Class 42: Software development in the framework of software publishing; Updating of computer software; Installation of computer software; Maintenance of computer software.

2. European Union trade mark application No 17 972 909 is rejected for all the contested goods and services. It may proceed for the remaining non-contested services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 972 909 for the figurative sign , namely against all the goods and services in Classes 9 and 41 as well as against some of the services in Class 42. The opposition is based on, inter alia, European Union trade mark registration No 16 673 171 for the word mark ‘life’. 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.

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 16 673 171 for the word mark ‘life’.

a) The goods and services

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

Class 9: Music software; Musical sound recordings; Musical video recordings; Downloadable digital music; Downloadable video recordings featuring music; Data recorded electronically; Downloadable electronic books; Downloadable ring tones for mobile phones; Recorded content; Information technology and audio-visual, multimedia and photographic devices; Navigation, guidance, tracking, targeting and map making devices; Information technology and audiovisual equipment; Access control devices; Alarms and warning equipment.

Class 41: Entertainment; Videotape production; Rental of sound recordings; Booking of seats for shows; Game services provided on-line from a computer network; Publication of electronic books and journals on-line; Providing publications from a global computer network or the internet which may be browsed; Providing on-line publications; Providing electronic publications; Providing a computer game that may be accessed network-wide by network users; Providing digital music from the internet; Provision of information relating to entertainment online from a computer database of the Internet; Providing on-line reviews of books; Internet games (non-downloadable); Providing video entertainment via a website; Providing television programmes, not downloadable, via video-on-demand transmission services; Providing films, not downloadable, via video-on-demand transmission services; Providing on-line music, not downloadable; Provision of on-line entertainment; Provision of games by means of a computer based system; Entertainment provided via the internet; Entertainment provided via a global communication network; Providing information in the field of music; Provision of entertainment information by electronic means.

Class 42: Hosting services and software as a service and rental of software; Consultancy in the field of computers; Conversion of computer programs and data, other than physical conversion; Conversion of data or documents from physical to electronic media; On-line computer services; Digitalization of sound and images; Cross-platform conversion of digital content into other forms of digital content; Copying of computer software; Computer hardware development; Software development, programming and implementation.

The contested goods and services are the following:

Class 9: Games software; Computer software, recorded; Computer software applications, downloadable; Downloadable graphics for mobile phones.

Class 41: Entertainment information; Entertainment services; Game services provided on-line from a computer network.

Class 42: Software development in the framework of software publishing; Updating of computer software; Installation of computer software; Maintenance of computer software.

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 Downloadable graphics for mobile phones are similar to the opponent’s Downloadable video recordings featuring music. They usually coincide in producer, relevant public and distribution channels.

The contested Games software; Computer software, recorded; Computer software applications, downloadable are similar to the opponent’s Information technology and audiovisual equipment. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 41

Entertainment services are identically contained in both lists of services (including synonyms).

The contested Entertainment information; Game services provided on-line from a computer network are included in the broad category of, or overlap with, the opponent’s Entertainment. Therefore, they are identical.

Contested services in Class 42

The contested Software development in the framework of software publishing is included in the broad category of the opponent’s Software development. Therefore, they are identical.

The contested Updating of computer software; Installation of computer software; Maintenance of computer software are included in the broad category of, or overlap with, the opponent’s Software programming. Therefore, they are identical.

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 are predominantly directed at the public at large. Some of the services in Class 42, such as Software programming, are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to above average as these can be expensive goods and services which are purchased infrequently.

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 composed of the word ‘life’, whereas the contested sign is a figurative sign composed of the single verbal element ‘LIFEZERO’ and the figurative device being the number ’0’ placed against a green hexagon.

The verbal element ‘LIFEZERO’ as such has no meaning. Although the contested sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). Therefore, the verbal element will be most likely divided into ‘LIFE’ and ‘ZERO’, since both these words are meaningful, and the word ‘LIFE’ is depicted in non-bold and the word ‘ZERO’ in bold font.

The General Court stated that the word ‘zero’ would be understood by the vast majority of the public in the European Union as ‘the basic English word indicating the numerical value of nothing or ‘none’ and will be understood throughout the whole European Union (09/02/2017, T-106/16, ziro, ECLI:EU:T:2017:67, § 47). This word has no direct meaning in relation to the goods and services in question; therefore, the distinctiveness of this word is normal.

The verbal element 'life' is also a basic English word which is understood throughout the European Union (15/10/2018, T-444/17, life coins / LIFE et al EU:T:2018:681, § 52). This word element will be perceived as ‘to refer to things or groups of things which are alive’ (information extracted from Collins Dictionary on 21/01/2020 at https://www.collinsdictionary.com/dictionary/english/life). This word has no direct meaning in relation to the goods and services in question; therefore, the distinctiveness of this word is normal.

The figurative element of the contested sign will be perceived as the number ‘0’ depicted in a fanciful manner. It has no direct meaning in relation to the goods and services in question; therefore, its distinctiveness is normal.

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. Therefore, in the contested sign the verbal element ‘LIFE’ will be more memorable by the public.

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

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal element of the contested sign, namely ‘LIFEZERO’, has a stronger impact on the consumer.

Visually, the signs coincide in ‘life’/’LIFE’. However, they differ in ‘ZERO’ of the contested sign, the stylisation of the letters in the contested sign as well as its figurative element.

Therefore, the signs are visually 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 letters ‛life’/’LIFE’, present identically in both signs. The pronunciation differs in the sound of the letters ‛ZERO’ of the contested sign, which has no counterpart in the earlier mark. It is very likely that the numeral ‛0’ (i.e. the figurative device) will not be pronounced as the public focuses its attention on verbal elements.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually similar to at least 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.

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.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking

into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical and partly similar, and they target the public at large and, to some extent also professionals, whose degree of attention may vary from average to above average. The signs are visually similar to an average degree as well as aurally and conceptually similar to at least an average degree. Furthermore, the earlier mark has a normal degree of distinctiveness.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

Bearing in mind the consumer’s imperfect recollection, the fact that the beginnings are more memorable to the public and the whole earlier mark is used as the first separate and distinctive verbal element of the contested sign, the aforesaid differences are not sufficient to outweigh the similarities between them and to exclude any likelihood of confusion.

The Opposition Division is convinced that consumers might believe that the conflicting goods and services come from the same undertaking or economically linked undertakings, even if their degree of attention is above average.

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 its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the word ‘LIFE’. In support of its argument the applicant refers to some trade mark registrations in the European Union.

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 ‘LIFE’. Under these circumstances, the applicant’s claims must be set aside.

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 for the word mark ‘life’. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right, namely European Union trade mark registration No 16 673 171 for the word mark ‘life’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and 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

Helen Louise MOSBACK

Michal KRUK

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.