OPPOSITION No B 1 871 600

Razor USA LLC, 12723 E. 166th Street, 90703, Cerritos, California, United States (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, London EC4A 1JP, 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 Page, White & Farrer Limited, Bedford House, John Street, London WC1N 2BF, United Kingdom (professional representative).

On 27/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 871 600 is partially upheld, namely for the following contested goods:

Class 9: Telephone sets; wireless telephone sets; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; mobile phones; mpeg audio layer-3 [MP3] players; television receivers; television remote controllers; encoded electronic chip cards for improvement of television image quality; universal serial bus [USB] drives; digital media broadcasting [DMB] players; headsets for mobile phones; portable chargers for mobile phone batteries and digital camera batteries; electronic photo albums; digital picture frames for displaying digital pictures, video clips and music; monitors for computer; lap top computers; computers; digital versatile disc [DVD] players; portable hard disk drives; apparatus for recording, transmission or reproduction of sound or images for use in telecommunications; apparatus for recording, transmission or reproduction of sound or images; electric audio and visual apparatus and instruments; stereos; computer software for mobile phone, namely, for mobile phone operating systems, sending and receiving information, to provide web-based access to applications, products and services; computer application software for television; computer application software for personal computer monitor; digital versatile disc [DVD] players for home theaters; speakers for home theaters; audio-video [AV] receivers for home theaters; projectors for home theaters; integrated circuits; audio receivers; on board units on vehicle and electronic toll smart cards for easy pass in highway; transponders, namely, electronic terminals equipped in vehicles for electronic commercial transactions; closed-circuit television [CCTV] cameras; network monitoring cameras namely for surveillance; digital signage; thermal printers; digital colour printers; laser printers; ink jet printers; colour printers; printers for use with computers; solar batteries; recorded computer programmes [programs]; downloadable computer programs [software]; personal computer [PC] cameras; digital voice recorders; videocassette recorders; network monitors; software for education; electronic notepads [e-notes]; tablet personal computers [pc]; interactive electronic white boards; settop boxes; downloadable image files accessible via the internet; electronic downloadable publications; video conference system; monitors for video conference; cameras for video conference; speakers for video conference; three dimensional eyeglasses for television receivers; software for dosimetry purposes in the field of radiotherapy; computer software for medical purposes; computer software for diseases diagnostics for medical purposes; computer software for electronic chart for medical purposes.

2. European Union trade mark application No 9 734 716 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 9 734 716 for the word mark ‘RAZOR SLIM’. The opposition is based on the following earlier marks, for which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR:

- European Union trade mark registration No 2 975 969 for the figurative mark ;

- European Union trade mark registration No 937 292 for the word mark ‘RAZOR’;

- European Union trade mark registration No 9 501 586 for the word mark ‘RAZOR’;

- European Union trade mark registration No 4 753 125 for the word mark ‘RAZR’;

- European Union trade mark registration No 4 753 191 for the word mark ‘RAZR’.

As a basis for the opposition filed under Article 8(1)(b) EUTMR, the opponent also invoked the following earlier rights as being well known in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention:

Well-known marks , ‘RAZOR’ and ‘RAZR’, used in each of the Member States of the European Union under Article 8(2)(c) EUTMR.

Finally, the opponent based also its opposition on the non-registered signs , ‘RAZOR’ and ‘RAZR’, used in the course of trade in each of the Member States of the European Union and in the European Union as a whole. In relation to these earlier signs, the opponent invoked Article 8(4) 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 937 292, European Union trade mark registration No 9 501 586 and European Union trade mark registration No 4 753 191.

a) The goods and services

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

European Union trade mark registration No 937 292 (hereinafter EM 1)

Class 3: Kits consisting primarily of dusters, air sprayers, cloths and cleansing liquids and anti-static solutions for homes, offices, home offices, fax machines, computer mouse, computer disk drives, keyboards and monitors, cd-roms, lenses for laser beams, tape drives for computer video cassette recorders and parts thereof, video cameras and parts thereof and lenses, television screens, reading heads for computers, capstans, rollers and drives; canned pressurised air; solutions for cleaning video and audio cassette recording heads; cleaning preparations.

Class 9: Computer accessories, namely controllers, loudspeakers, microphones, headsets, mice, and trackballs, and computer software for providing general educational information in an entertaining manner, computer game and video accessories, namely joysticks, computer game joysticks, computer game cards, hand-held units for playing video games; computer software for video games and computer software for entertaining educational computer games; home office electronic products, namely schedulers/time organisers; telephone dialers; dictating machines; voice recorders; facsimile machines; modems; fax/modems; personal communications devices; and telephone answering machines; and computer accessories, namely sound cards; data input devices, namely voice command devices, keyboards, modems, electronic data input devices and sensory perception devices; virtual reality devices, namely headgear, massagers, tactile sensory providers, loudspeakers, video projectors and olfactory sensory providers computer game and video game accessories, namely computer game soundcards; computer, video game and electronics equipment and accessories, sold separately or bundled together, namely, headphones; ear phones; microphones; telephones using a global computer information network; controllers for accessing and searching a global computer information network; cable box controllers; remote control units for cable boxes and computers; optical scanners; high-speed computer game cards; shielded computer speakers; multimedia headsets; audio speakers; wireless speakers; woofers; wireless audio interface, transmitters, receivers and headphones; null modems; voltage surge protectors; copier stands and clamps thereof; printer stands; monitor glare screens; keyboard drawers; data switches; vacuum-blower-cleaning apparatus for computers, copiers, videocassette television transformers and filters; vcr-tv antenna switches; terminators and signal reducers; vcr-tv signal amplifiers and stereo sound simulators; dubbing equipment; vcr-tv signal splitters; video stabilising and picture enhancing apparatus; video switching units and junction boxes; band separators; video cassette eraser; video cassette catalogue labels; signal to watt meters; speakers; microphone plugs; brackets and mounts designed for antennas and receivers; electric static-reducers and noise-filters fuses; blank computer diskettes; data cassettes; keyboards and keyboard adapter; power adapters; a/c to d/c power inverters; power cord gender changers; computer current switches; audio and video connectors; audio adapter; a/c adapters; cassettes/cartridge adapters; plugs and jacks; software compatibility adapters; mouse adapters; coaxial cable assemblies; demagnetizers; microphone stands; portable telephone plugs and jacks; telephone cables and outlets; speaker wire; audio-level controls and switches; cables for data, computers, monitors, modems, video games, joysticks and pads for use with a television, video, audio, video camera and printers; extension cables; "y" splitter cables; extension cords; power replacement cords; jacks; dust covers; blank recording tape and cassette head cleaning cartridges; storage units, holders, hanging files, boxes, wallets and drawers for cd-roms, computer cartridges, cassettes and disks, video cassettes, records, tapes, audio cassettes, video cameras and stereo accessories; computer mouse pads; and wrist pads, fax machines, head-cleaning tapes for videocassette recorders.

European Union trade mark registration No 9 501 586 (hereinafter EM 2)

Class 9: Computer accessories, namely controllers, loudspeakers, microphones, headsets, mice, and trackballs, and computer software for providing general educational information in an entertaining manner, computer game and video accessories, namely joysticks, computer game joysticks, computer game cards, hand-held units for playing video games; computer software for video games and computer software for entertaining educational computer games; home office electronic products, namely schedulers/time organisers; telephone dialers; dictating machines; voice recorders; facsimile machines; modems; fax/modems; personal communications devices; and telephone answering machines; and computer accessories, namely sound cards; data input devices, namely voice command devices, keyboards, modems, electronic data input devices and sensory perception devices; virtual reality devices, namely headgear, massagers, tactile sensory providers, loudspeakers, video projectors and olfactory sensory providers computer game and video game accessories, namely computer game soundcards; computer, video game and electronics equipment and accessories, sold separately or bundled together, namely, headphones; ear phones; microphones; telephones using a global computer information network; controllers for accessing and searching a global computer information network; cable box controllers; remote control units for cable boxes and computers; optical scanners; high-speed computer game cards; shielded computer speakers; multimedia headsets; audio speakers; wireless speakers; woofers; wireless audio interface, transmitters, receivers and headphones; null modems; voltage surge protectors; copier stands and clamps thereof; printer stands; monitor glare screens; keyboard drawers; data switches; vacuum-blower-cleaning apparatus for computers, copiers, videocassette television transformers and filters; vcr-tv antenna switches; terminators and signal reducers; vcr-tv signal amplifiers and stereo sound simulators; dubbing equipment; vcr-tv signal splitters; video stabilising and picture enhancing apparatus; video switching units and junction boxes; band separators; video cassette eraser; video cassette catalogue labels; signal to watt meters; speakers; microphone plugs; brackets and mounts designed for antennas and receivers; electric static-reducers and noise-filters fuses; blank computer diskettes; data cassettes; keyboards and keyboard adapter; power adapters; a/c to d/c power inverters; power cord gender changers; computer current switches; audio and video connectors; audio adapter; a/c adapters; cassettes/cartridge adapters; plugs and jacks; software compatibility adapters; mouse adapters; coaxial cable assemblies; demagnetizers; microphone stands; portable telephone plugs and jacks; telephone cables and outlets; speaker wire; audio-level controls and switches; cables for data, computers, monitors, modems, video games, joysticks and pads for use with a television, video, audio, video camera and printers; extension cables; ''y'' splitter cables; extension cords; power replacement cords; jacks; dust covers; blank recording tape and cassette head cleaning cartridges; storage units, holders, hanging files, boxes, wallets and drawers for cd-roms, computer cartridges, cassettes and disks, video cassettes, records, tapes, audio cassettes, video cameras and stereo accessories; computer mouse pads; and wrist pads, fax machines, head-cleaning tapes for videocassette recorders; game software for mobile phones and PDAs; application software for mobile phones and PDAs; computer peripheral, computer peripheral devices, computer peripheral apparatus; headsets for use with computers; helmets for computers and gaming; gaming headset; virtual reality headset and helmets; audio and visual headsets and helmets.

European Union trade mark registration No 4 753 191 (hereinafter EM 3)

Class 9: Pagers, two-way radios, radio transmitters, radio receivers, radio transceivers, electronic organizers, and related accessories for the foregoing goods, namely, headsets, microphones, speakers, carrying cases, and belt clips; computer software and programs used for transmission or reproducing or receiving of sound, images, video or data over a telecommunications network or system between terminals and for enhancing and facilitating use and access to computer networks and telephone networks; computer software for use in general purpose database management; computer e-commerce software to allow user to safely place orders and make payments in the field of electronic business transactions via a global computer network or telecommunications network; computer software for training and product support for computers and mobile phones in the field of communications; computer game software for mobile handsets; computer software and programs featuring music, movies, animation, electronic books; computer software for the distribution of information and interactive multimedia content containing text, images, video and sound to users in the field of communications; computer software and programs for management and operation of wireless telecommunications devices; computer software for accessing, searching, indexing and retrieving information and data from global computer networks and global communication networks, and for browsing and navigating through web sites on said networks; computer software for sending and receiving short messages and electronic mail and for filtering non-text information from the data; analog and digital radio transceivers or receivers for data, voice, image and video communication; electronic game software for mobile handsets; cameras, namely photographic cameras, digital cameras, motion picture cameras, video cameras; systems and apparatus for electric money transactions, namely smart cards, smart card readers; calculators; cards for communications purposes, namely, data cards, modem cards and fax modem cards for communication purposes, all for use with communications apparatus; modems, global positioning units, batteries, battery chargers, power adapters, antennas, and sunglasses; telephones and related accessories.

Class 38: Communications services; telecommunications; broadcasting; electronic mail; facsimile transmission; message sending; providing telecommunications connections to a global computer network; providing user access to a global computer network; internet and telecommunications service provider services; rental of telecommunication equipment; routing and junction services; teleconferencing services; consulting services in the field of selection, implementation and use of telephony and wireless telecommunications systems and equipment; information and advisory services relating to the aforesaid services including such services provided on-line or via the Internet.

Class 42: Licensing of intellectual property, technology and trade marks; application service provider services; technical support services, namely, troubleshooting of technology problems; consulting services in the field of design of telephony and wireless telecommunications systems and equipment; technical help-line services provided by telephone; research and development services in the field of telecommunications; professional consultancy and technical advice services in the field of telecommunications; engineering services; studies and research in the fields of the use and maintenance of telecommunications equipment and services; computer software consultation and design; information and advisory services relating to the aforesaid services including such services provided on-line or via the Internet.

The contested goods are the following:

Class 9: Telephone sets; wireless telephone sets; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [pda]; mobile phones; mpeg audio layer-3 [mp3] players; television receivers; television remote controllers; encoded electronic chip cards for improvement of television image quality; universal serial bus [usb] drives; digital media broadcasting [dmb] players; headsets for mobile phones; portable chargers for mobile phone batteries and digital camera batteries; electronic photo albums; digital picture frames for displaying digital pictures, video clips and music; monitors for computer; lap top computers; computers; digital versatile disc [dvd] players; portable hard disk drives; apparatus for recording, transmission or reproduction of sound or images for use in telecommunications; apparatus for recording, transmission or reproduction of sound or images; electric audio and visual apparatus and instruments; stereos; computer software for mobile phone, namely, for mobile phone operating systems, sending and receiving information, to provide web-based access to applications, products and services; computer application software for television; computer application software for personal computer monitor; digital versatile disc [dvd] players for home theaters; speakers for home theaters; audio-video [av] receivers for home theaters; projectors for home theaters; integrated circuits; audio receivers; on board units on vehicle and electronic toll smart cards for easy pass in highway; transponders, namely, electronic terminals equipped in vehicles for electronic commercial transactions; closed-circuit television [cctv] cameras; network monitoring cameras namely for surveillance; digital signage; thermal printers; digital colour printers; laser printers; ink jet printers; colour printers; printers for use with computers; solar batteries; recorded computer programmes [programs]; downloadable computer programs [software]; personal computer [pc] cameras; digital voice recorders; videocassette recorders; network monitors; software for education; electronic notepads [e-notes]; tablet personal computers [pc]; interactive electronic white boards; settop boxes; downloadable image files accessible via the internet; electronic downloadable publications; video conference system; monitors for video conference; cameras for video conference; speakers for video conference; three dimensional eyeglasses for television receivers; dna chips; dosage dispensers; capillary tubes; oxygen transvasing apparatus; incubators for bacteria culture; test tubes; food analysis apparatus; physical and chemical laboratory apparatus and instruments; apparatus and instruments for physics; apparatus for automatic chromatography; magnetic agitators; specimens; pipettes; chemistry apparatus and instruments; software for dosimetry purposes in the field of radiotherapy; computer software for medical purposes; biochips; cell chips; testing apparatus for cell chips; analysis apparatus for cell chips; diagnostic chips for pharmaceutical purposes; diagnostic chips for medical purposes; computer software for diseases diagnostics for medical purposes; computer software for electronic chart for medical purposes.

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 and the opponent’s lists 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.

The contested portable chargers for mobile phone batteries and digital camera batteries overlap with the opponent battery chargers (EM 3). Therefore, they are identical.

The contested electric audio and visual apparatus and instruments at least overlap with the opponent’s video stabilising and picture enhancing apparatus (EM 1). Therefore they are identical.

The contested stereos; speakers for home theaters; speakers for video conference are included in, or at least overlap with the opponent’s speakers (EM 1). Therefore, they are identical.

The contested audio-video [AV] receivers for home theaters; audio receivers are included in the broad category of the opponent’s receivers. Therefore, they are identical.

The contested projectors for home theaters overlap with the opponent’s video projectors. Therefore, they are identical.

The contested thermal printers; digital colour printers; laser printers; ink jet printers; colour printers; printers for use with computers are included in the broad category of the opponent’s computer peripheral, computer peripheral devices, computer peripheral apparatus (EM 1) which is a broad category including printers. Therefore, they are identical.

The contested solar batteries are included in the broad category of the opponent’s batteries (EM 3). Therefore, they are identical.

The contested digital voice recorders are included in the broad category of the opponent’s voice recorders (EM 1). Therefore, they are identical.

Despite the applicant’s arguments, the Opposition Division considers that the contested encoded electronic chip cards for improvement of television image quality and the opponent’s high-speed computer game cards (EM 1) have the same essential nature (plastic cards for storage of information and data), can share the same purpose and are normally manufactured by the same undertakings; they also have the same distribution channels and often target the same relevant public. Therefore, these goods are highly similar.

Contrary to the applicant’s findings, the contested computer software for mobile phone, namely, for mobile phone operating systems, sending and receiving information, to provide web-based access to applications, products and services; computer application software for television; computer application software for personal computer monitor; recorded computer programmes [programs]; downloadable computer programs [software]; software for education; software for dosimetry purposes in the field of radiotherapy; computer software for medical purposes; computer software for diseases diagnostics for medical purposes; computer software for electronic chart for medical purposes are at least highly similar to the opponent’s computer software for video games and computer software for entertaining educational computer games (EM 1) insofar as these goods at least coincide in their nature and method of use and that they are produced by the same IT companies and sold through the same distribution channels.

The contested closed-circuit television [CCTV] cameras; network monitoring cameras namely for surveillance; personal computer [pc] cameras; cameras for video conference are at least highly similar to the opponent’s cameras, namely photographic cameras, digital cameras, motion picture cameras, video cameras (EM 3). These goods have at least the same nature and method of use, and they furthermore coincide in producers and distribution channels.

Contrary to the applicant’s submissions, the Opposition Division finds a similarity between the contested electronic photo albums; digital picture frames for displaying digital pictures, video clips and music and the opponent’s computer software for the distribution of information and interactive multimedia content containing text, images, video and sound to users in the field of communications (EM 3). The contested digital photo frames are picture frames that display digital photos without the need of a computer or printer. These goods differ from traditional photo frames in that they are in fact electronic devices that normally use a software application and come with a range of features. Some may play videos as well as display photographs and may utilize a Wi-Fi connection, etc. Consequently, these contested goods are similar to the above mentioned opponent’s goods. These goods usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary (see for example decision of 05/02/2019 on Cancellation No 20 643 C).

The contested three dimensional eyeglasses for television receivers are glasses that allow viewing in three dimensions for use in movie theatres, with smart televisions or gaming computers to which these goods are strictly complementarity. They are offered by the same companies as those producing other accessories, such as the opponent’s computer peripheral, computer peripheral devices, computer peripheral apparatus. Consequently, these goods target the same public and follow the same distribution channels. Therefore, these goods are similar.

The contested settop boxes are devices that receive digital signal and turn it into content that can be displayed on a television screen or a monitor. They are considered similar to the opponent’s application software for mobile phones and PDAs (EM 2). Application software, also known as ‘an app’, is computer software that is designed to help the user perform various tasks on a computer. Application software differs from system software in that it can be accessed by the user and run on a computer. Application software is usually designed with the user in mind. The new definition of application is used to refer to the small apps that are designed for mobile phones. The goods in question are aimed at the same public and produced by the same or related undertakings. They are distributed through the same channels and use of the one is indispensable for the use of the other. Consequently, these goods are considered to be similar.

The contested electronic downloadable publications are similar to the opponent’s computer software for providing general educational information in an entertaining manner. These goods are complementary, target the same public and they have the same producers and distribution channels.

There is a connection between the contested on board units on vehicle and electronic toll smart cards for easy pass in highway; transponders, namely, electronic terminals equipped in vehicles for electronic commercial transactions and the opponent’s systems and apparatus for electric money transactions namely smart cards, smart card readers. These goods have a similar nature and purpose (ease electronic financial transactions) and they are sold through the same distribution channels. They are also produced by the same companies and target the same public. Therefore, they are at least similar.

The contested telephone sets; wireless telephone sets; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; mobile phones; MPEG audio player-3 [MP3] players; television receivers; television remote controllers; universal serial bus [USB] drives; digital media broadcasting [DMB] players; headsets for mobile phones; monitors for computer; lap top computers; computers; digital versatile disc [DVD] players; portable hard disk drives; apparatus for recording, transmission or reproduction of sound or images for use in telecommunications; apparatus for recording, transmission or reproduction of sound or images; digital versatile disc [DVD] players for home theaters; integrated circuits; network monitors; electronic notepads [e-notes]; tablet personal computers [PC]; video conference system; monitors for video conference are at least similar to a low degree to the opponent’s personal communications devices; telephones using a global computer information network; computer peripheral, computer peripheral devices, computer peripheral apparatus (EM 1). Indeed, these goods at least coincide in their producers and distribution channels and target the same relevant public.

The contested digital signage; interactive electronic white boards are also known as message boards and are online communication systems where one can inter alia share or request information. These goods can be considered at least similar to a low degree to the opponent’s computer software for entertaining educational computer games (EM 1). They are all related to the field of information technology and share, to a certain degree, a similarity in purpose (sharing information), and can be considered complementary to each other in the sense that the opponent’s goods may include specific electronic notice boards used for entertaining educational purpose. Furthermore, these goods can coincide in end users, distribution channels and commercial origin.

The contested videocassette recorders are at least similar to a low degree to the opponent’s head-cleaning tapes for videocassette recorders (EM 1). Indeed, the opponent’s goods are devices used for cleaning the recorders and playback heads of a magnetic tape drive found in video or audio tape machines. These goods are clearly at least complementary, are produced by the same companies and target the same public.

The contested downloadable image files accessible via the internet are similar to a low degree to the opponent’s computer software for providing general educational information in an entertaining manner. Indeed, these goods are complementary, target the same public and share the same distribution channels.

The contested DNA chips; dosage dispensers; capillary tubes; oxygen transvasing apparatus; incubators for bacteria culture; test tubes; food analysis apparatus; physical and chemical laboratory apparatus and instruments; apparatus and instruments for physics; apparatus for automatic chromatography; magnetic agitators; specimens; pipettes; chemistry apparatus and instruments; biochips; cell chips; testing apparatus for cell chips; analysis apparatus for cell chips; diagnostic chips for pharmaceutical purposes; diagnostic chips for medical purposes are dissimilar to the opponent’s goods and services, in Classes 3, 9, 38 and 42 as covered by EM 1, EM 2 and EM 3. These contested goods are used for scientific or medical purposes and target a public with particular needs related to health which is not the case for the opponent’s goods. These goods and services have also different natures and methods of use. They have neither the same usual origin nor the same distribution channels. They are not in competition or complementary.

The opponent provided the following reasoning in relation to the contested biochips; cell chips; testing apparatus for cell chips; analysis apparatus for cell chips; diagnostic chips for medical purposes finding them highly similar to opponent’s goods. The reasoning it gives is the following:

RAZR Reg. No. 004753191 contains in Class 9 the terms "cards for communications purposes, namely, data cards, modem cards and fax modem cards for communication purposes, all for use with communications apparatus". In addition, the earlier mark covers complementary services such as, in Class 38, the terms "consulting services in the field of selection, implementation and use of telephony and wireless telecommunications systems and equipment" and in class 42 the term "consulting services in the field of design of telephony and wireless telecommunications systems and equipment", "research and development services in the field of telecommunications", "engineering services" and "studies and research in the fields of the use and maintenance of telecommunications equipment and services".

The Opposition Division disagrees with these findings for the reasons previously mentioned and based on the specific nature, purpose, method of use and relevant public of these contested goods.

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 as well as at professionals working in the IT sector.

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

c) The signs and distinctiveness of the earlier marks

EM 1) and EM 2) RAZOR EM 3) RAZR	RAZOR SLIM
Earlier trade marks	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 forming the contested sign, ‘RAZOR’ and ‘SLIM’, are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘RAZOR’ of the contested sign and of EM 1) and EM 2) will be understood as ‘a cutting instrument with a sharp blade or blades’ by the relevant public (information extracted on 22/05/2019 from Oxford English Dictionary at http://www.oed.com/view/Entry/158771?rskey=SdkKG7&result=1&isAdvanced=false#eid).

The element ‘RAZR’ of EM 3) has no meaning for the relevant public when perceived visually. However, the relevant public may regard it as a misspelling of the English word ‘RAZOR’, because of their aural identity.

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 claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, neither ‘RAZOR’ nor ‘RAZR’ have a meaning for the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

The adjective ‘SLIM’ will be understood as ‘thin’, ‘thin in an attractive way’ or ‘not as big as one would like’. It is weak in relation to part of the goods, as it gives indications on a characteristic of part of the goods, namely their size or width. However, and as correctly pointed out by the applicant, this is not true in relation to others of the contested goods, such as electronic downloadable publications for which ‘SLIM’ is distinctive to an average degree.

Visually, the signs at least coincide in the sequence of letters ‘RAZ’ and in the letter ‘R’. Regarding in particular the comparison between EM 1) and EM 2) on the one hand, and the contested sign on the other hand, the signs further coincide in the identical letter ‘O’.

The marks differ because of the additional word ‘SLIM’ in the contested sign, and as regards EM 3), because of the omission of the additional letter ‘O’.

The applicant mainly states that the signs significantly differ in length. Nevertheless, it should be noted that the word ‘RAZOR’ (and to a lesser extent the word ‘RAZR’) forms the beginning of the contested sign which is generally the part that primarily catches the consumer’s attention and therefore will be remembered more clearly than the rest of the sign (25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

Furthermore, the word differentiating the marks (‘SLIM’) is weak for part of the goods and placed at the end of the sign.

Therefore, the signs are at least visually similar to an average degree.

Aurally, account should be taken of the fact that the words ‘RAZOR’ and ‘RAZR’ will be pronounced the same way by the relevant public. Therefore, the signs only differ because of the presence of the additional element ‘SLIM’.

Bearing in mind the importance of the coinciding beginning of the marks, the signs are aurally similar to at least an average degree.

Conceptually, the relevant public will perceive the meanings of the elements ‘RAZOR’ and ‘SLIM’ as explained above. In addition, the Opposition Division also considers that the relevant public will understand ‘RAZR’ as meaning ‘RAZOR’.

As regards the presence of the element ‘SLIM’, this element is weak for part of the goods, and distinctive for the remaining part of the goods.

Given the foregoing, the signs are conceptually similar at least to an average degree, the degree of similarity being higher in the scenario where ‘SLIM’ is weak.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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).

It has been established in the previous sections of this decision that the goods are partly dissimilar and partly at least similar to a low degree. The signs are visually, aurally and conceptually at least similar to an average degree.

Furthermore, account should be taken of 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 with 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).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities between them, also bearing in mind that they mainly differ because of the presence of an additional element which is the end of the sign and has, normally, less significance.

Therefore, the relevant public, despite paying a higher than average degree of attention in some cases, may believe that the goods come from the same undertaking or, at least, economically linked undertakings. Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested goods denote a new brand line of goods provided under the opponent’s mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 937 292, No 9 501 586 and No 4 753 191. 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 various degrees to those of the earlier trade marks. Indeed, the Opposition Division considers that the signs are sufficiently similar to offset a lower degree of similarity between the goods.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier registrations:

- European Union trade mark registration No 4 753 125 for the word mark ‘RAZR’ and covering the following goods:

Class 9: Telephones and related accessories.

Class 38: Communications services.

- European Union trade mark registration No 2 975 969 for the figurative mark covering the following goods:

Class 9: Sunglasses and parts and cases therefore; videotapes, helmets, video game equipment; CD Roms, DVD; video game bags; video game cases; CD Rom cases, CD Rom bags, DVD cases, DVD bags, video disc bags, video disc cases, video game cartridge cases, video game cartridge bags.

Class 12: Bicycles, tricycles, motorized vehicles, including motorized scooters and structural parts.

Class 28: Games and playthings, sporting goods, toys, toy vehicles, toy scooters, non-motorized scooters, ride-on toys, pogo sticks, skate boards, sports bags, protective equipment and pads, video games.

The other earlier rights invoked by the opponent cover the same or a narrower scope of the goods and services. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in relation to the following earlier marks:

- European Union trade mark registration No 2 975 969 for the figurative mark ;

- European Union trade mark registration No 937 292 for the word mark ‘RAZOR’;

- European Union trade mark registration No 9 501 586 for the word mark ‘RAZOR’

- European Union trade mark registration No 4 753 125 for the word mark ‘RAZR’;

- European Union trade mark registration No 4 753 191 for the word mark ‘RAZR’.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part)], when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 22/07/2011 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 27/11/2011.

Following a suspension of the proceedings, a new deadline was set on 05/06/2018. The new deadline expired on 10/10/2018.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

EARLIER WELL-KNOWN MARK - ARTICLE 8(2)(C) IN CONJUNCTION WITH ARTICLE 8(1)(B) EUTMR

As a basis for the opposition filed under Article 8(1)(b) EUTMR, the opponent also invoked the following earlier rights as well known in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention:

Well-known marks , ‘RAZOR’ and ‘RAZR’, used in each of the Member States of the European Union.

According to Article 8(2)(c) EUTMR, for the purpose of paragraph 1, ‘earlier trade marks’ means:

‘trade marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.’

According to the Article 6bis of the Paris Convention, ‘…the countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.’

Therefore, in order for Article 8(2)(c) EUTMR (in conjunction with Article 8(1)(b) EUTMR) to be applicable, two conditions must be fulfilled:

(1) It has to be established that the earlier mark was well-known in the relevant territory on the date when the contested mark was filed;

(2) That because of the identity or similarity between the contested mark and the earlier well-known mark, as well as between the goods and services covered by the marks, there exists a likelihood of confusion on the part of the public in the relevant territory.

These conditions are cumulative. Therefore, where a mark does not satisfy one of these conditions, the opposition based on a well-known trade mark under Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR cannot succeed.

With regard to the first condition, the opponent needs to prove, before the end of the substantiation period, that it is the owner of the well-known mark and that this mark became well-known to the relevant public at least in a substantial part of the relevant territory before the filing date of the contested trade mark, which is 14/02/2011.

Even though the terms ‘well-known’ and ‘reputation’ denote distinct legal concepts, there is a substantial overlap between them, as shown by a comparison of the way well-known marks are defined in the WIPO Recommendations with the way reputation was described by the Court in its judgment of 14/09/1999, C-375/97, General Motors, EU:C:1999:408, § 22 (concluding that the different terminology is merely a ‘…nuance, which does not entail any real contradiction…’,).

In practical terms, the threshold for establishing whether a trade mark is well-known or enjoys reputation will usually be the same. Therefore, it will not be unusual for a mark that has acquired a well-known character to have also reached the threshold laid down by the Court for marks with reputation, given that in both cases the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and that the thresholds required for each case are expressed in quite similar terms (‘known or well-known among the relevant sector of the public’ for well-known marks, compared with ‘known by a significant part of the relevant public’ as regards marks with reputation) (see 14/09/1999, C-375/97, ‘General Motors’, EU:C:1999:408, § 22).

This has also been confirmed by case-law. In its judgment of 22/11/2007, C-328/06, Fincas Tarragona, EU:C:2007:704, § 17, the Court qualified the notions of ‘reputation’ and ‘well-known’ as related notions (‘notions voisines’), underlining in this way the substantial overlap and relationship between them (11/07/2007, T‑150/04 TOSCA BLU, EU:T:2007:214, § 56-57).

Therefore, in analysing whether or not the earlier mark is well known, the criteria established by the Court as regards marks with reputation can be validly applied. In this regard, the Court concluded that in order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned for the goods or services covered by that trade mark. In making such an assessment, all the relevant factors must be considered and, in particular, the market share held by the trade mark, the intensity, geographic extent and duration of its use, and the size of investment made by the undertaking in promoting it (14/09/1999, C‑375/97, General Motors, EU:C:1999:408, § 22, 23, 25 and 27; 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 34).

The opponent did not submit any evidence concerning the fact that the trade marks on which the opposition is based are ‘well-known’.

Given that one of the necessary requirements of Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent also based its opposition on the non-registered signs ‘RAZOR’, and ‘RAZR’ used in the course of trade in all of the Member States of the European Union and the European Union as a whole for goods and services in Classes 3, 9, 12, 28, 38 and 42.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier signs in the course of trade.

On 22/07/2011 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 27/11/2011.

Following a suspension of the proceedings, a new deadline was set on 05/06/2018. The new deadline was 10/10/2018.

The opponent did not submit any evidence of use in the course of trade of the earlier signs on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Nicole CLARKE

Birgit FILTENBORG

Marine DARTEYRE

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.