OPPOSITION Nо B 3 122 958

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

Shenzhen Changqingteng Electronics Co., Ltd., No. 51, Xinwu Village, Xinqiang Community, Guangming Street, Guangming District, 518000 Shenzhen, People’s Republic of China (applicant), represented by Lawgical, S.L.P, Calle Nuñez Morgado, numero 5, 28036 Madrid, Spain (professional representative).

On 13/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 122 958 is upheld for all the contested goods, namely:

Class 9: Laptop cases; computer mouses; computer mouse pads; electrical scales; cases for headphones; earphones; protection masks; protective eyeglasses; protective cases for tablet computers; cases for mobile phones; data cables; camera stands; boxes [cases] for glasses.

2. European Union trade mark application No 18 224 204 is rejected for all the contested goods. It may proceed for the remaining non-contested goods, namely:

Class 9: Diving goggles; divers’ gloves.

Class 14: All the goods in this class.

Class 18: All the goods in this class.

Class 25: All the goods in this class.

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

REASONS

On 02/06/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 224 204 for the word mark ‘IvyLife’, 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 for the word mark ‘LIFE’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

However, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 4 585 295.

a) The goods

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

Class 9: Mouse (data processing equipment); computers; electric cables; measuring devices, electric; sound transmitting apparatus; headphones; mobile telephones; lenses (optics); mouse pads (mouse mats); video cameras; 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: Laptop cases; computer mouses; computer mouse pads; electrical scales; cases for headphones; earphones; protection masks; protective eyeglasses; protective cases for tablet computers; cases for mobile phones; data cables; camera stands; boxes [cases] for glasses.

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 the earlier trade mark 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 taken into account for each contested item in the comparison below, for reasons of space they will not be repeated but rather will be assumed to apply.

Computer mouses, computer mouse pads are identically contained in both lists of goods (including synonyms).

The contested electrical scales are included in the broad category of the opponent’s measuring devices, electric. Therefore, they are identical.

The contested earphones are included in the broad category of the opponent’s sound transmitting apparatus. Therefore, they are identical.

The opponent’s electric cables comprise a wide category of goods, such as electrical and electronic components, but also goods such as electric cables for the transmission of sound and images. Therefore, the contested data cables are at least similar to the opponent’s electric cables, as they at least coincide in producer, relevant public and distribution channels. Furthermore, they can have the same purpose.

The contested cases for headphones; cases for mobile phones are similar to the opponent’s headphones and mobile telephones respectively, as these goods usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested camera stands are similar to the opponent’s video cameras, as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested protection masks are similar to the opponent’s safety helmets for sports, as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested laptop cases, protective cases for tablet computers are similar to at least a low degree to the opponent’s computers, as they at least coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested boxes [cases] for glasses are similar to at least a low degree to the opponent’s lenses (optics), as they can coincide in producer, relevant public and distribution channels.

The contested protective eyeglasses are similar to a low degree to the opponent’s safety helmets for sports, which are pieces of protective equipment worn to protect the head from accidents during sporting activities. These goods may coincide with the contested protective eyeglasses in relevant public, distribution channels and manufacturers, to the extent that they may be intended as protective equipment when practising various sporting activities, for instance cycling.

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 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	IvyLife
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 verbal elements of the signs are meaningful in certain territories, for example in those countries where English is understood. This affects the public’s perception of the signs in those territories 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.

Both 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.

The earlier mark is the word ‘life’, which is an English word meaning, 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 05/07/2021 at https://www.collinsdictionary.com/dictionary/english/life). This word will be understood not only by native English speakers, but also by the public with a rudimentary knowledge of that language, as it is a basic English word (see, to this effect, 12/02/2015, T‑318/13, LIFEDATA, EU:T:2015:96, § 22; 15/10/2018, T‑444/17, life coins / LIFE et al., EU:T:2018:681, § 52). The verbal element ‘LIFE’ is not descriptive, allusive or otherwise weak for the relevant goods in Class 9 and is, therefore, distinctive to an average degree.

The contested sign is the word ‘IvyLife’. Although it 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). In view of this principle and the visual separation produced by the use of an upper-case letter ‘L’ in the middle of the string of letters, the relevant public will break the earlier mark down into the words ‘Ivy’ and ‘Life’.

The word ‘ivy’ means ‘an evergreen plant that grows up walls or along the ground’ (information extracted from Collins English Dictionary on 05/07/2021 at https://www.collinsdictionary.com/dictionary/english/ivy). This word is not descriptive, allusive or otherwise weak for the relevant goods in Class 9 and is, therefore, distinctive. The contested sign’s second verbal element ‘LIFE’ has the meaning and the degree of distinctiveness for the relevant goods as described above.

Visually and aurally, the signs coincide in the word ‘LIFE’ and its sound, which constitutes the entire earlier mark and the contested sign’s second verbal element and has an average degree of distinctiveness. They differ in the contested sign’s first verbal element ‘Ivy’ and its sound, which has no counterpart in the earlier mark.

Despite their differing lengths and the fact that the contested sign’s differing element falls at its beginning, the contested sign entirely reproduces the only element of the earlier mark, which is fully distinctive in both signs and performs an independent role therein. 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 word ‘LIFE’, but differ in that conveyed by the contested sign’s first verbal element ‘Ivy’, which is distinctive. 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 under examination in the relevant territory. Therefore, the distinctiveness of the earlier mark 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 to varying degrees. 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 mark 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 constitutes the entire earlier mark and the contested sign’s second verbal element. Although the contested sign’s differing element falls at its beginning, its second verbal element ‘LIFE’ nevertheless performs an independent and distinctive role within this sign. Moreover, this word is longer than the differing element and meaningful in both signs, which will be immediately perceived by the relevant public under examination. 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 element ‘Ivy’, the signs’ overall impressions on the relevant public are similar, contrary to the applicant’s argument.

Taking into account all the above, and 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. Indeed, due to the use of the identical verbal element ‘LIFE’, 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), as the additional word ‘Ivy’ may be perceived as a new version, belonging to the same ‘house’ brand ‘LIFE’.

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.

This conclusion also applies to the goods found to be similar to a low degree. This is because the coinciding verbal element ‘LIFE’ plays an independent distinctive role in the contested sign and will not escape the public’s attention. Therefore, taking into account all the above considerations regarding the similarity between the signs and between the goods, the public may assume that the goods found to be similar to at least a low degree also originate from the same or economically linked undertakings.

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. It may proceed for the remaining non-contested goods.

As the earlier EUTM registration No 4 585 295 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 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

Liliya YORDANOVA

Anna PĘKAŁA

Jakub MROZOWSKI

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.