OPPOSITION No B 3 128 875

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

Cao County Fuyou Home Network Technology Co., Ltd, No. 108, Tianzhuang ICBC Family Dependent Building, Cao County, 274000 Heze, Shandong, People’s Republic of China (applicant), represented by Lamya Sossi Mouaissa, Paseo De Gracia 12, 1º, 08007 Barcelona, Spain (professional representative).

On 26/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 128 875 is upheld for all the contested goods, namely:

Class 9: Couplers [data processing equipment]; tablet computers; smart watches; pedometers; rulers [measuring instruments]; transmitters of electronic signals; radios; wearable activity trackers; cases for smartphones; protective films adapted for smartphones; cabinets for loudspeakers; earphones; car video recorders; cameras [photography]; meters; measuring devices, electric; theft prevention installations, electric; batteries, electric; smoke alarms; security alarms; electric alarms.

2. European Union trade mark application No 18 180 516 is rejected for all the above goods. It may proceed for the remaining non-contested goods, namely:

Class 9: Diving suits; gloves for divers; life jackets; goggles for sports; divers’ masks; nose clips for divers and swimmers; protective helmets for sports; reflective safety vests; underwater breathing apparatus.

Class 12: All the goods in this class.

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

REASONS

On 19/08/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 180 516 for the word mark ‘Niclife’, namely against some of the goods in Class 9. The opposition is based on the following European Union trade mark registrations:

 No 4 585 295 for the word mark ‘LIFE’ (earlier mark 1),

 No 16 673 171 for the word mark ‘life’ (earlier mark 2).

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 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, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

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

Earlier mark 1

Class 9: Batteries, electric; theft prevention installations, electric; measuring devices, electric; sound transmitting apparatus; loudspeaker boxes; 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.

Earlier mark 2

Class 9: Information technology and audio-visual, multimedia and photographic devices; tracking devices; alarms and warning equipment.

The contested goods are the following:

Class 9: Couplers [data processing equipment]; tablet computers; smart watches; pedometers; rulers [measuring instruments]; transmitters of electronic signals; radios; wearable activity trackers; cases for smartphones; protective films adapted for smartphones; cabinets for loudspeakers; earphones; car video recorders; cameras [photography]; meters; measuring devices, electric; theft prevention installations, electric; batteries, electric; smoke alarms; security alarms; electric alarms.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 goods in Class 9 of earlier mark 1 contain the following limitations, 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. While these limitations have been duly taken into account in the following comparison (in relation to each contested item), to avoid repetition, it will not be expressly mentioned, but will be considered included by way of reference.

The contested measuring devices, electric; theft prevention installations, electric; batteries, electric are identical either because they are identically contained in the opponent’s list of goods of earlier mark 1, or at least overlap with the opponent’s batteries, electric; theft prevention installations, electric; measuring devices, electric.

The contested couplers [data processing equipment]; tablet computers; smart watches; transmitters of electronic signals; radios; earphones; car video recorders; cameras [photography] are included in the broad category of the opponent’s information technology and audio-visual, multimedia and photographic devices of earlier mark 2. Therefore, they are identical.

The contested pedometers; rulers [measuring instruments; meters are included in the broad category of, or at least overlap with, the opponent’s measuring devices, electric of earlier mark 1. Therefore, they are identical.

The contested wearable activity trackers are included in the broad category of the opponent’s tracking devices of earlier mark 2. Therefore, they are identical.

The contested smoke alarms; security alarms; electric alarms are included in the broad category of the opponent’s alarms and warning equipment of earlier mark 2. Therefore, they are identical.

The contested cabinets for loudspeakers are identical to the opponent’s loudspeaker boxes of earlier mark 1, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with the contested goods.

The contested cases for smartphones; protective films adapted for smartphones are similar to the opponent’s sound transmitting apparatus of earlier mark 1, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are 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 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

LIFE (earlier mark 1) life (earlier mark 2)	Niclife
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’ coinciding verbal element ‘LIFE’ is meaningful in certain territories, for example in those countries where English is understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion, since the signs are more similar overall if there is a conceptual similarity between them. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as Ireland.

The earlier marks are word marks comprising the verbal element ‘LIFE’, which is depicted in upper-case letters in earlier mark 1 and lower-case letters in earlier mark 2. This verbal element is an English word that means, inter alia, ‘the quality which people, animals, and plants have when they are not dead, and which objects and substances do not have’ (information extracted from Collins English dictionary on 19/07/2021 at https://www.collinsdictionary.com/dictionary/english/life). The verbal element ‘LIFE’ is not descriptive, allusive or otherwise weak for the relevant goods in Class 9 and is, therefore, distinctive.

The contested sign comprises one verbal element ‘Niclife’. It is settled case-law that relevant consumers, when perceiving that 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). It is possible for the consumer to break down a word mark even if only one of the elements making up that mark is familiar to the consumer (22/05/2012, T 585/10, Penteo, EU:T:2012:251, § 72; 06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51). The Opposition Division does not concur with the opponent’s assertion that the verbal component ‘Nic*’ will be perceived as a male given name, as this name does not exist in Ireland and, therefore, the string of letters ‘Nic*’ will be perceived as meaningless by Irish consumers. Nevertheless, the relevant public under examination will separate the verbal element ‘Niclife’ into the verbal components ‘Nic’ and ‘life’. This is justified by the fact that consumers naturally look for a meaning when perceiving a word mark.

The initial verbal component ‘Nic’ has no meaning for the relevant public under examination and is, therefore, distinctive. The verbal component ‘life’ will be understood as explained above, and is distinctive to an average degree for the contested goods.

All the signs are word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). In addition, word marks do not have elements that could be considered clearly more dominant than others.

Visually and aurally, the signs coincide in the verbal element ‘LIFE’ (and its sound), which comprises the earlier marks’ sole element and the contested sign’s second verbal component. They differ in the first verbal component ‘Nic’ of the contested sign, which has no counterpart in the earlier marks.

Despite their differing lengths and the fact that the contested sign’s differing element is at its beginning, the contested sign entirely reproduces the sole element of the earlier marks, which is distinctive in both earlier signs, and plays an independent distinctive role in the contested sign. Therefore, the signs are visually and aurally similar to a below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with the same meaning conveyed by the distinctive element ‘LIFE’. Although the contested sign’s first verbal component ‘Nic’ is meaningless for the public under examination and, therefore, does not introduce any concept, its presence will nevertheless be noted. Therefore, the signs are conceptually similar to 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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public under examination in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier marks on the market, the association that can be made with the registered marks and the degree of similarity between the marks and between the goods identified. It must be appreciated globally, taking into account all the 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).

The goods are partly identical and partly similar. They target the public at large and the professional public. The public’s degree of attentiveness varies from average to high. The degree of inherent distinctiveness of the earlier marks is normal.

The signs are visually and aurally similar to a below-average degree and conceptually similar to an average degree on account of their coinciding verbal element ‘LIFE’, which comprises the earlier marks’ sole element and the contested sign’s second verbal component. Although the contested sign’s differing component ‘Nic’, is at its beginning, its impact is not overwhelming and, in any event, it is insufficient to counteract the similar overall impression created by the signs. Consumers will still note the presence of the element ‘LIFE’, which plays an independent distinctive role in the contested sign. Moreover, this coinciding element is longer than the differing element, will immediately be perceived by the relevant public under examination, and is meaningful in all the signs under comparison. As follows from case-law, there is no basis for the claim that the average consumer, who is reasonably well informed and reasonably observant and circumspect, will disregard the second part of the verbal element of a sign and only remember the first part (09/12/2020, T‑190/20, Almea (fig.) / Mea, EU:T:2020:597, § 45; 18/12/2008, T‑287/06, Torre Albéniz, EU:T:2008:602, § 56).

It is settled case-law that an examination of the similarity between the marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52; 15/07/2015, R 3080/2014‑2, KOPPARBRIGHT / ParBright, § 54). In addition, marks are similar when they are at least partly identical in one or more relevant aspects (24/11/2016, T‑250/15, CLAN / CLAN MACGREGOR, EU:T:2016:678, § 55). Therefore, despite the contested sign’s differing first verbal component, ‘Nic’, the overall impression of the signs on the relevant public are similar.

Taking into account all the above, especially the similarities between the signs and the identity and similarity between the goods, there is a likelihood of confusion in the form of a likelihood of association. 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 covered are from the same or economically linked undertakings.

The relevant goods in Class 9 belong to a market sector in which it is common to create sub-brands, namely variations of the main brand that include additional verbal elements. Due to the use of the identical verbal element ‘LIFE’, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, 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). The additional component ‘Nic’ may be perceived as a new version, belonging to the same ‘house’ brand ‘LIFE’.

Considering all the above, there is a likelihood of confusion in the form of likelihood of association on the part of the English-speaking part of the public, such as Ireland. 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 European Union trade mark registrations No 4 585 295 and No 16 673 171. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed for the remaining non-contested goods.

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

Liliya YORDANOVA

Anna PĘKAŁA

Justyna GBYL

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.