OPPOSITION Nо B 3 095 902

 

Xiaomi Inc., Floor 13, Rainbow City Shopping Mall II of China Resources No. 68, Qinghe Middle Street, Haidian District, 100028 Beijing, People’s Republic of China (opponent), represented by Lane IP Limited, The Forum, St Paul’s, 33 Gutter Lane, London EC2V 8AS, United Kingdom (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 Mitscherlich, Patent- Und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 25/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 095 902 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 074 724 is rejected in its entirety.

 

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

 

REASONS

 

On 25/09/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 074 724 MiLED (word mark). The opposition is based on, inter alia, EUTM registration No 17 601 667, for the figurative mark, . The opponent invoked Article 8(1)(b) and 8(5) 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 17 601 667 .

Although the applicant requested that the opponent submit proof of use of all the earlier marks on which the opposition is based, the five-year grace period applies with respect, inter alia, to EUTM registration No 17 601 667, because the filling date of the contested application is 31/05/2019 and the registration date of this earlier mark is 22/10/2019, that is, not more than five years before the said filing date. Therefore, the request for proof of use is inadmissible with respect to this earlier mark.

a) The goods

 

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

Class 9: Notebook computers; pedometers; apparatus to check franking; cash registers; ticket dispensers; dictating machines; holograms; hemline markers; voting machines; lottery machine; electronic recognition apparatus for animals; face recognition apparatus; punched card machines for offices; dressmakers' measures; electronic notice boards; mobile telephones; electronic book readers; projection screens; measuring instruments; air analysis apparatus; speed checking apparatus for vehicles; connected bracelets [measuring instruments]; audiovisual teaching apparatus; inductors [electricity]; simulators for the steering and control of vehicles; mirrors [optics]; materials for electricity mains [wires, cables]; galena crystals [detectors]; printed circuit boards; variometers; electrical adapters; video screens; remote control apparatus; optical fibers [light conducting filaments]; heat regulating apparatus; lightning conductors [rods]; electrolysers; fire extinguishing apparatus; radiological apparatus for industrial purposes; protective helmets; theft prevention installations, electric; spectacles; mobile power pack (built-in battery); animated cartoons; portable remote car arrester; downloadable software in the nature of a mobile application; humanoid robots with artificial intelligence; tablet computers; interactive touch screen terminals; smartwatch (data-processing); smart glasses (data-processing); computer peripheral devices; protective films adapted for smartphones; cases for smartphones; wearable activity trackers; virtual reality headsets; camcorders; headphones; cabinets for loudspeakers; biochips; sockets, plugs and other contacts [electric connections]; protective masks; batteries, electric; chargers for electric batteries; scales with body mass analysers; decorative magnets; electrified fences; electronic collars to train animals; stickers on refrigerator, magnetic; encoded identification bracelets, magnetic; routers; television apparatus; drive recorder; cameras [photography]; selfie sticks [hand-held monopods]; 3d spectacles; smart card readers; LED screens; scales; plugs; speakers; cases for mobile phones; in-ear earphones; screens for mobile telephones and television apparatus; wireless communication devices; VR glasses; intelligent wearable apparatus; smartphones; adapters; power banks; humanoid robots with artificial intelligence, in particular for babies purpose, and controlled by electronic devices; tablet computers used for children education; two way radios; remote control apparatus for intelligent household appliances; remote controls; amplifiers for signal; charging equipments for vehicle; testing and quality control devices, namely for testing quality of air indoors.

The contested goods are the following:

Class 9: Mobile phones; smartphones; software for mobile phone; laptop computers; computers; software for computer; computer application software; downloadable electronic publications; tablet computers; remote control apparatus; wearable computers; smart phones that fit on the user's face in the manner of eyeglasses; wristbands adapted or shaped to contain or attach to handheld digital electronic media players; computer software for wireless data communication for receiving, processing, transmitting and displaying information relating to fitness, body fat, body mass index; personal portable devices for recording, organizing, transmitting, manipulating, reviewing and receiving text, data, images and audio files relating to health and wellness; digital signage; software for televisions; television receivers; television sets; monitors for computers; apparatus for recording, transmission or reproduction of sound or images; digital versatile disc (DVD) players; touch panels; display panels; polarizing films for LED panels; LED displays for televisions; audio-video receivers for home theaters; computer monitors; head mounted video display.

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

The term ‘in particular’, used in the opponent’s list of goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

However, the term ‘namely’, used in the opponent’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.

 

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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.

Mobile phones; smartphones; tablet computers; remote control apparatus are identically included in both lists of goods (with slight changes in wording).

The contested software for mobile phone; software for computer; computer application software include, as broader categories, or at least overlap with the opponent’s downloadable software in the nature of a mobile application. 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 laptop computers overlap with the opponent’s notebook computers. Therefore, they are identical.

The contested computers include, as a broader category, the opponent’s tablet computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested wearable computers; smart phones that fit on the user's face in the manner of eyeglasses; wristbands adapted or shaped to contain or attach to handheld digital electronic media players are included in the broad category of, or overlap with, the opponent’s intelligent wearable apparatus. Therefore, they are identical.

The contested personal portable devices for recording, organizing, transmitting, manipulating, reviewing and receiving text, data, images and audio files relating to health and wellness overlap with the opponent’s wearable activity trackers. Therefore, they are identical.

The contested digital signage which could include electronic signage such as video screens overlaps with the opponent’s video screens. Therefore, they are identical.

The contested television receivers; television sets are included within the broader category of the opponent’s television apparatus. Therefore, they are identical.

The contested monitors for computers; computer monitors are included within the broader category of the opponent’s computer peripheral devices. Therefore, they are identical.

The contested apparatus for recording, transmission or reproduction of sound or images; digital versatile disc (DVD) players fall within the broader category of, or otherwise overlap with, the opponent’s audiovisual teaching apparatus. Therefore, they are identical.

The contested touch panels; display panels; LED displays for televisions overlap with the opponent’s LED screens. Therefore, they are identical.

The contested polarizing films for LED panels overlap with the opponent’s protective films adapted for smartphones. Therefore, they are identical.

The contested audio-video receivers for home theaters, which, inter alia, amplify audio signals, overlaps with the opponent’s amplifiers for signal. Therefore, they are identical.

The contested head mounted video display overlaps with the opponent’s virtual reality headsets. Therefore, they are identical.

The contested computer software for wireless data communication for receiving, processing, transmitting and displaying information relating to fitness, body fat, body mass index overlaps with the opponent’s downloadable software in the nature of a mobile application. Therefore, they are identical.

The contested downloadable electronic publications are electronic versions of traditional media, like e-books, electronic journals, online magazines, online newspapers etc. It is common to distribute books, magazines and newspapers to consumers in the form of electronic publications through tablet reading devices and smartphones by means of software applications (apps). Consequently, there exists a complementary relationship between the opponent’s downloadable software in the nature of a mobile application and downloadable electronic publications. Their producers can be the same; they follow the same distribution channels and the public is generally also the same. These goods are considered to be similar.

These days, it is common for consumers of smart televisions to download software in order to operate, or enhance the performance of the television and such software may be provided by the manufacturer of the television. It follows that the contested software for televisions is similar to the opponent’s television apparatus as they can coincide in distribution channels, producers and relevant consumers. They 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 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

 

	MiLED
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.

Although the meaning of the term ‘LED’ is a light-emitting diode (‘LED’), being a semiconductor light source that emits light when current flows through it, nowadays the term ‘LED’ is widely and generally known due to its application across a range of devices including televisions and laptop computers. In that regard, it may be noted that the term ’LED’ appears, as a descriptor, in the above-mentioned list of goods of both parties to these proceedings. Accordingly, the Opposition Division considers that ’LED’ is known by the relevant consumers in the EU as being a term widely used, inter alia, in relation to electronics even if its precise meaning (e.g. that its letters stand for ‘light-emitting diode’, as explained above) may not be known by them.

Whether or not the earlier mark, comprising the stylised letters ‘MI’, will be perceived as meaningful – ‘mi’ being, for example, the Spanish or Italian word for the possessive pronoun ‘my’ or me’ respectively or, in tonic sol-fa, being the third degree of any major scale, made famous in the 1965 film, ‘The Sound of Music’ – the fact remains that there is no correlation with the goods in question and so this word has a normal degree of distinctive character. This is so also for another part of the English-speaking public that perceives ‘MI’ as a misspelling of the word ‘MY’ due to, inter alia, its phonetic identity to the word ‘MY’.

Although the contested sign is composed of one verbal element, the relevant consumers 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), taking into account also the irregular capitalisation of the letters ‘LED’ therein. It follows that the relevant public will dissect the contested sign into the components ‘Mi’ and ‘LED’.

Having regard to what has been explained above, at least for part of the English-, Spanish-, and Italian-speaking public the contested sign has a univocal meaning because it will be perceived as being the combination of ‘Mi’ and ‘LED’ , in which the component ‘Mi’ functions as a possessive adjective that qualifies the noun ‘LED’. Moreover, irrespective of the distinctive character of the component ‘Mi’, this component ‘Mi’ has less impact than the component ‘LED’ in the perception of the contested sign due to its subordinate function as an adjective.

In order to avoid a unnecessary multiplicity of scenarios for some of which the coinciding component ‘Mi’ of the contested sign has less impact than the non-coinciding component ‘LED’, the Opposition Division considers it appropriate to focus on the part of the relevant public for which ‘Mi’ will not be understood as a possessive adjective – such as, for example, the German-speaking part thereof.

For the public under analysis, therefore, whether the component ‘Mi’ of the contested sign is meaningful (e.g. as a note of tonic solfa) or meaningless, it is normally distinctive of the relevant goods. Meanwhile, the component ‘LED’ thereof is either non-distinctive of some of the relevant goods (e.g. LED displays for televisions) or otherwise weakly distinctive of the relevant goods because it indicates that the goods have an, or some, LED function or feature or they could be used with, or control, LED devices/components.

Although the stylisation of the earlier mark will not go unnoticed, it will be regarded as being primarily decorative in nature and so will not play a significant role in the trade mark perception of that mark by the relevant public.

Visually and aurally, irrespective of the different pronunciation rules for the public under analysis, the signs coincide in the letters/sounds ‘MI’ (presented in the form ‘Mi’ in the contested sign), being the entirety of the earlier mark, differing in the additional letters/sound ‘LED’ of the contested sign, and in the stylization of the earlier mark which will not, however, have much impact as explained above.

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.

However, the impact of this positional coincidence, especially visually-speaking, is reduced somewhat by the fact that the earlier mark is a short sign (comprising just two letters) such that the relevant public will not fail to notice the visual, and to a lesser extent the aural, difference due to the non-coinciding component ‘LED’.

Taking the above into account, as well as the distinctiveness of the verbal elements of the signs as explained above, the Opposition Division considers that the signs at issue are visually similar to a below average degree and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the public under analysis, the sign at issue are either not conceptually similar where the coinciding component ‘Mi’ is perceived as meaningless (given that the component ‘LED’ will be meaningful, even given that it is non distinctive for at some of the goods in question), or conceptually similar to at least an average degree, where the said component is perceived as having a meaning (e.g. the tonic solfa note in music). That said, the impact of the said finding that the signs are not conceptually similar for part of the public in question is diminished given the, at best, weak distinctiveness of the meaningful component ‘LED’.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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 has no descriptive meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

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 are partly identical and partly similar. The earlier mark enjoys normal distinctive character (as explained in section d) above) and the degree of attention varies from average to high.

For the public under analysis, the signs are visually similar to a below average degree, aurally similar to an average degree and conceptually either similar to at least an average degree or not semantically similar (the impact of the latter finding being, however, diminished, as explained at section c) above).

The Opposition Division takes into account 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).

In its submissions the applicant argues against confusion on the basis that the earlier mark is a short sign. In support of its arguments, the applicant cites a number of decisions of the Boards of Appeal. The Guidelines of the Office concerning so-called short signs (Guidelines for Examination in the Office, Part C, Opposition, section 2, Chapter 7 Global Assessment, 7.1) make clear that in the assessment of the likelihood of confusion it is important to establish the degree of inherent distinctiveness of the earlier trade mark, and therefore its scope of protection. The Guidelines go on to state that a likelihood of confusion can be safely excluded when two conflicting signs, albeit containing or consisting of the same single letter or a combination of letters not recognisable as a word, are stylised in a sufficiently different way or contain a sufficiently different figurative element, so that their different overall graphical representation eclipses the common verbal element.

The Opposition Division notes that the earlier mark enjoys normal inherent distinctive character (as set out at section d) above). Moreover, the letters ‘MI’ are fully contained at the start of the contested sign, in which they retain an independent distinct role for the public under analysis. Furthermore, the additional component ‘LED’ of the contested sign is either non distinctive or weakly distinctive of the relevant goods. In these circumstances, notwithstanding the fact that the signs at issue have been found to be visually similar to a below average degree, it cannot be correctly concluded that the visual differences between the signs eclipse the common verbal component ‘MI’. It follows that nothing in the said Guidelines concerning short signs precludes a finding of confusion in the instant case.

With respect to the previous said decisions of the Boards of Appeal cited by the applicant, the Opposition Division points out that none of them is relevant to the instant proceedings given that none of them concerned the same factual situation as here whereby the earlier mark is reproduced as an independent distinctive element within the contested sign.

Therefore, the said submissions of the applicant must be dismissed as unfounded.

Taking the relevant factors into consideration the Opposition Division considers that the similarities between the signs due to the coincidence in the distinctive word/component ‘Mi’, being the only verbal element of the earlier mark and coming at the start of the contested sign, are not counteracted by the differences, pertaining to the additional component ‘LED’ of the contested sign and the stylization of the earlier mark, both of which have less impact for the reasons set out above. Moreover, this is so despite the fact that the earlier mark constitutes a short sign as explained already above.

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

Considering all the above, there is a likelihood of confusion on the part of the public under analysis, such as the German-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.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 17 601 667. It follows that the contested trade mark must be rejected for all the contested goods, including those for which a higher than average degree of attention may be exercised by the relevant public.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation as has been claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the said earlier right 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).

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

 

 

Irena LYUDMILOVA LECHEVA

Kieran HENEGHAN

María del Carmen SUCH SÁNCHEZ

 

 

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.