OPPOSITION Nо B 3 124 273

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

Lab4Life Sp. z o.o., Zwyciestwa 96/98, 81-451 Gdynia, Poland (applicant).

On 15/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 124 273 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 202 818 is rejected in its entirety.

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

REASONS

On 18/06/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 202 818 ‘LifePal’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 16 673 171 ‘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 European Union trade mark registration No 16 673 171.

a) The goods and services

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

Class 9: Recorded content.

The contested goods and services are the following:

Class 9: Computer application software for mobile phones, tablet computers, portable media players, handheld computers, wearable computers and related mobile devices, namely, software for setting and tracking healthy lifestyle goals of users; computer application software for mobile phones, tablet computers, portable media players, handheld computers, wearable computers and related mobile devices, namely, software enabling users to calculate, track and share lifestyle metrics; computer application software for mobile phones, tablet computers, portable media players, handheld computers, wearable computers and related mobile devices, namely, software providing educational and entertaining information about healthy lifestyle practices; computer application software for mobile phones, tablet computers, portable media players, handheld computers, wearable computers and related mobile devices, namely, software guiding users to build healthy habits and eliminate unhealthy habits; computer application software for mobile phones, tablet computers, portable media players, handheld computers, wearable computers and related mobile devices, namely, software enabling users to match with healthy lifestyle coaches and communicate together via text, audio and video chat.

Class 41: Healthy lifestyle instruction; providing online classes for learning healthy lifestyle; online journals, namely, blogs and online courses in the field of healthy lifestyle instruction; personal development training; coaching [training]; health and wellness training.

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 applicant’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.

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.

Contested goods in Class 9

All the contested goods are computer application software for use with different types of electronic devices. They overlap with the opponent’s recorded content. Therefore, they are identical.

Contested services in Class 41

The opponent’s recorded content may include teaching and instructional material, such as sound and video recordings and other types of data and information, recorded on different types of carriers. These goods are essential to the opponent’s instructional, training and coaching services. Therefore, the opponent’s goods and all the applicant’s services are complementary. This is because, in order to supply these services, it is both helpful and usual to use different types of recorded content, such as educational videos, films, tapes, etc. Service providers offering any kinds of courses (including online) and training sessions often distribute these goods to participants as learning aids.

Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, the opponent’s recorded content in Class 9 and applicant’s healthy lifestyle instruction; providing online classes for learning healthy lifestyle; online journals, namely, blogs and online courses in the field of healthy lifestyle instruction; personal development training; coaching [training]; health and wellness training are considered similar.

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 mainly directed at the public at large. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

life	LifePal
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 average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they 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, 06/10/2004, T‑356/02, VITAKRAFT, EU:T:2004:292, § 51). Moreover, the contested sign’s irregular capitalisation will further help the consumers to identify the meaningful elements, namely ‘Life’ and ‘Pal’.

The Court has established that the common element of the signs, ‘life’, is a basic English word understood throughout the European Union (15/10/2018, T‑444/17, life coins / LIFE, EU:T:2018:681, § 52). It will be perceived as referring to ‘things or groups of things which are alive’ or to ‘the period between birth and death’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/life on 01/06/2021). It has no direct meaning for the opponent’s goods and therefore has a normal degree of distinctiveness. As regards the contested goods and services, particularly taking into account the specification of the contested mark and the focus on a healthy lifestyle etc., it may not be excluded that the relevant public may perceive in this element a vague allusion to characteristics of the relevant goods and services. Therefore, it has a somewhat lower than average degree of distinctiveness.

The contested sign’s second element, ‘Pal’, will be understood by the English-speaking part of the public as referring to ‘a close friend’ (information extracted from Collins Dictionary on 01/06/2021 at https://www.collinsdictionary.com/dictionary/english/pal) However, this element is not meaningful in certain territories, for example in those countries where English is not understood. Since an additional concept in the contested sign may help the public to distinguish between the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, Italian-, Latvian- and Lithuanian-speaking part of the public. For this part of the public, the element ‘Pal’ is meaningless and therefore has a normal degree of distinctiveness.

Visually, the earlier trade mark is entirely reproduced at the beginning of the contested sign. In word signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. In general, therefore, the beginning of a sign has a significant influence on the overall impression made by the mark (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30). The signs differ in the contested sign’s element ‘Pal’. Therefore, the signs are visually similar to an average degree.

Aurally, the relevant public will pronounce the earlier mark identically with the beginning of the contested sign, which will be pronounced in two syllables as ‘LIFE-PAL’. The pronunciation differs in the syllable ‘Pal’. Therefore, considering the importance of the signs’ beginnings, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The relevant public will perceive the element ‘Life’ identically in both signs. Although the contested sign’s second element ‘Pal’ has no meaning for the relevant public, its presence will nevertheless be perceived. 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 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 territory under consideration. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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 are partly identical and partly similar. The degree of attention may vary from average to high. The signs are similar to an average degree in all three aspects of the comparison. The distinctiveness of the earlier mark is normal.

The earlier mark, ‘life’, is entirely reproduced in the contested sign. Moreover, even if in the contested mark this element is somewhat allusive, it is placed at the beginning, where it will be remembered more clearly since it is usually the beginning of a sign that catches consumers’ attention. The differing element ‘Pal’ appears at the end of the contested sign, to which the consumer generally pays less attention.

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 relevant consumer’s possibly high degree of attention will be offset by the identity or similarity between the goods and this will be reinforced by the similarities between the signs in all three aspects. Moreover, 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).

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).

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-, Italian-, Latvian- and Lithuanian-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 European Union trade mark registration No 16 673 171. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier European Union trade mark registration No 16 673 171 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

Rasa BARAKAUSKIENĖ

Inés GARCÍA LLEDÓ

Enrico D’ERRICO

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.