OPPOSITION Nо B 3 091 941

 

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

 

Aukey Technology Co., Ltd, Room 102, Building P09, South China City Electronic Trading Center, Longgang District, Shenzhen, People’s Republic of China (applicant), represented by IPSIDE, 6, Impasse Michel Labrousse, 31100 Toulouse, France (professional representative).

On 09/07/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 091 941 is upheld for all the contested goods, namely:

 

	Class 9: Light-emitting electronic pointers; rearview cameras for vehicles; car video recorders; battery boxes; batteries for lighting; battery chargers; batteries, electric; rechargeable batteries; plugs, sockets and other contacts [electric connections]; consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters.
2.		European Union trade mark application No 18 034 807 is rejected for all the contested goods. It may proceed for the remaining goods and services.

 

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

 

REASONS

 

On 15/08/2019, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 034 807 (figurative mark), namely against some of the goods in Class 9. The opposition is based on, inter alia,  European Union trade mark registration No 4 585 295, LIFE (word mark). 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 EUTM registration No 4 585 295.

 

a) The goods

 

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

 

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.

The contested goods are the following:

 

Class 9: Light-emitting electronic pointers; rearview cameras for vehicles; Car video recorders; Battery boxes; batteries for lighting; Battery chargers; Batteries, electric; Rechargeable batteries; Plugs, sockets and other contacts [electric connections]; Consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters.

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

The term ‘namely’, used in the applicant’s list of goods 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 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.

 

The limitation at the end of the opponent’s list of goods excludes the goods for educational and/or entertainment content, specifically board games in general. However, this limitation as will be seen in the comparison of goods below does not exclude the finding of similarity between the goods, as the relevant Canon criteria are still applicable.

Batteries, electric; battery chargers are identically contained in both lists of goods (including synonyms).

The contested light-emitting electronic pointers overlap with the opponent's laser pointers (luminous pointers). Therefore, they are identical.

The contested car video recorders are included in the opponent's broad category of video recorders. Therefore, they are identical.

The contested rechargeable batteries; batteries for lighting are included in the opponent’s broad category of batteries, electric. Therefore, they are identical.

The contested audio amplifiers, audio speakers, audio receivers, audio decoders, speakers are included in or, overlap with, the opponent’s sound-reproducing apparatus, sound transmitting apparatus. Therefore, they are identical.

The contested battery boxes are similar to the opponent’s batteries, electric as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested rearview cameras for vehicles are similar to the opponent's computer software [recorded] because they coincide in producer, relevant public and distribution channels. Furthermore, they are complementary. Through the combination of hardware and software, it is possible to see through camera the area behind the car.

The contested plugs, sockets and other contacts [electric connections] are similar to the opponent's connection boxes (electricity), because they coincide in distribution channels, end user and producer and their purpose is to connect electricity. 

The contested electrical audio and speaker cables and connectors are similar to the opponent’s sound-reproducing apparatus and sound transmitting apparatus as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested video decoders, which may be either a hardware device or a software, converts encoded digital stream into audio, video that can be displayed on a television or portable viewing device. Consequently, this is similar to the opponent’s computer programs as they coincide in relevant consumer, producer/provider and distribution channels.

 

The contested power conversion devices, power converters, and power inverters are electro-mechanical devices for converting electrical energy from alternating current into direct current and vice versa, they change the voltage or frequency of the current and consequently they are similar to a low degree to the opponent’s measuring devices, electric, which are needed to measure and transform. Therefore, they coincide in relevant public, producer, distribution channels and may also be complementary.

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 found to be identical or similar (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

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 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 common element ‘LIFE’ is meaningful in certain territories, for example in those countries where English is understood. Therefore, in order to take into account the semantic aspect in the comparison, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as in Ireland and Malta.

‘LIFE’ is ‘the quality which people, animals, and plants have when they are not dead, and which objects and substances do not have’ (information from the Collins Dictionary on 02/07/2021 at https://www.collinsdictionary.com/dictionary/english/life). Consequently, it is normally distinctive for the relevant goods as it does not describe or in any other manner refers to the goods in question.

The contested sign is the verbal element ‘TACKLIFE’ within a black lined rectangle going from wider to a bit narrower, consequently shrinking the size of the word ‘LIFE’ a little. This rectangle is of purely decorative nature and has no distinctiveness. Contrary to the applicant’s argument and although it is acknowledged that the sign consists of a single string of letters, account must be taken of the fact that 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). There is also a visual dissection as both words have different sizes. In the present case, the relevant public will dissect the sign into the elements ‘LIFE’, with the meaning and distinctiveness above described, and the element ‘TACK’. The latter is ‘a short nail with a broad, flat head, especially one that is used for fastening carpets to the floor’ or it can be understood as ‘if you tack something to a surface, you pin it there’ (information extracted from Collins Dictionary on 02/07/2021 at https://www.collinsdictionary.com/dictionary/english/tack). This has no relation to the relevant goods as it does not describe or in any other manner refers to the goods in question, consequently, its distinctiveness is normal.

The applicant argues that the contested sign is a long sign, which leads the public to be less aware of the differences between them. However, as argued above, even if a long sign, the public will dissect it and recognize both words, namely ‘TACK’ and ‘LIFE’.

As a whole ‘TACKLIFE’ has no meaning and is normally distinctive.

Visually and aurally the signs coincide in the word ‘LIFE’, and the sound of its letters. However, they differ in the first part of the contested sign, ‘TACK’ and the purely decorative rectangle. As explained above the relevant public will dissect the sign into two elements and recognise clearly the word 'LIFE' in the contested sign. Bearing in mind that the coinciding element is entirely incorporated in the contested sign, and has an independent and distinctive role, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the part of the public under analysis. Although the contested sign will be associated with the meaning of ‘TACK’, as the signs will both be associated with the same meaning of ‘LIFE’ as explained above, the signs are conceptually similar to an average degree. Moreover, it is to be pointed out that ‘TACKLIFE’ as a whole has no meaning, so only the meaning of each of the elements as mentioned above will be perceived.

 

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 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 are partly identical and partly similar (to varying degrees). They target the public at large and also professionals, whose degree of attention may vary from average to high. Furthermore, the earlier mark has a normal degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to an average degree since they coincide in the distinctive element ‘LIFE’, which constitute the whole earlier mark and plays an independent role in the contested sign. Moreover, the additional word ‘TACK’, although its first position, will not prevent consumers from regarding the other element ‘LIFE’ in the contested sign as well.

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. It is common for undertakings active on the market to use sub‑brands, that is to say signs that derive from a principal mark and that have an element in common, in order to distinguish the scope of one product from that of another. It is, therefore, conceivable that the target public regardless of its degree of attention, even if it does not directly confuse the signs, may still regard the identical or similar goods designated by the conflicting signs as different product lines that come from the same undertaking or from economically linked undertakings.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the applicant are not relevant to the present proceedings. The opposition case B 2 854 712 dated 29/08/2018 is not comparable as neither BILBA/BILBOA or BITIBA have a concept and the earlier sign is not completely included in the contested sign as the case at hand. Consequently, their reasoning is not applicable here.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 found to be identical or similar to those of the earlier trade mark. The opposition is also successful insofar as the goods that are similar to a low degree are concerned. Based on the interdependence principle and taking into account the complete insertion of the earlier sign, there is also likelihood of confusion for the goods considered to be similar to a low degree.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 4 585 295. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier right EUTM registration No 4 585 295 ‘LIFE’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights 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

 

 

Peter QUAY

Astrid Victoria WÄBER

Karin KLÜPFEL

 

 

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.