OPPOSITION No B 2 560 913

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

ON Corp US Inc., 10920 Via Frontera Ste 540, San Diego, California 92127, United States of America (applicant), represented by V.O., Carnegieplein 5, 2517 KJ The Hague, Netherlands (professional representative).

On 04/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 560 913 is partially upheld, namely for the following contested goods and services:

Class 9: Photographic, cinematographic, optical, image processing apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; cameras; photographic cameras, film cameras, digital cameras; camera cases; camera housings, camera straps; bags for cameras and photographic equipment; lenses for cameras and camera accessories, such as lens hoods (for cameras), light filters for cameras, camera flashes.

Class 37: Photographic apparatus and camera repair; repair of photographic, cinematographic, optical, image processing apparatus and instruments, of apparatus for recording, transmission or reproduction of sound or images, of cameras, photographic cameras, film cameras, digital cameras.

2. European Union trade mark application No 14 199 921 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 199 921. The opposition is based on European Union trade mark registration No 4 585 295. 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.

1. The goods and services

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

Class 7: Tin openers (electric); electric generators; electric hammers; electric motors (not for land vehicles); fruit presses (electric) for household purposes; electromechanical apparatus for preparing beverages; electric hand drills; glue guns, electric; electric food processors; knives (electric); blenders, electric, for household purposes; electromechanical food preparation machines; machines and apparatus for polishing (electric); fruit presses, electric; machines and apparatus for cleaning (electric) for household purposes; electric beaters; electric shears; whisks, electric for household purposes; electric shoe polishers; machines and apparatus (electric) for carpet shampooing; food processors (electric); grinders/crushers (electric) for household purposes; coffee grinders (other than hand operated); mills for household purposes (other than hand-operated); knife grinders; vacuum cleaners; bags for use in vacuum cleaners; vacuum cleaner attachments for disseminating perfumes and disinfectants; washing machines; bread cutting machines.

Class 8: Flat irons (non-electric); non-electrical tin openers; egg slicers (non-electric); irons (non-electric hand tools); depilation appliances (electric and non-electric); hand implements for hair curling (non-electric); Depilation appliances, electric and non-electric; Hair clippers, electric and non-electric; cheese slicers (non-electric); manicure sets, electric; manicure sets; nail files, electric; fingernail polishers (electric or non-electric); nail clippers (electric or non-electric); pizza cutters (non-electric); razor cases; razors, electric and non-electric beard-clipping machines; gimlets (hand tools); milling cutters (hand tools); hand implements for hair curling (non-electric); hand tools (hand-operated).

Class 9: Magnetic encoders; magnetic data carriers; optical data media; data-processing apparatus; optical character readers; writing and/or reading implements (data processing); magnetic data carriers; mouse (data processing equipment); optical data carriers; disc exchangers (for computers); scanners [data processing equipment]; memories for data processing installations, processors (central processing units); compact discs (read-only memory); compact discs (audio-video); computers; recorded computer programs; computer software [recorded]; games programs for computers; computer operating programs (recorded); computer peripheral devices; computer programs (downloadable); computer keyboards; printers for use with computers; wrist rests for use with computers; interfaces [for computers]; laptops (computers); floppy disc drives; monitors for computers; monitors (computer hardware), navigation apparatus (computer programs) for vehicles (onboard computers); notebooks (computers); computer peripheral devices; computer programs; computer software (recorded); computer game programs; keyboards for computers; make-up removing appliances, electric; grids for electric accumulators, chargers for electric accumulators, plates for electric accumulators, electric accumulators; alarm bells, electric; connection boxes (electricity), display apparatus (electric); electronic display panels; batteries, electric; flat irons, electric; theft prevention installations, electric; electric wires; electrodynamic apparatus for the remote control of railway points; electric cables; electric capacitors; electromagnetic coils; electronic publications [downloadable]; electronic pens [visual display units]; discharge tubes, electric, other than for lighting; anti-interference devices (electricity); batteries, electric, for vehicles; electrodynamic signal remote control apparatus; photocopiers (photographic, electrostatic, thermic); inductance coils (electricity); electric devices for attracting and killing insects; wire connectors (electricity); door bells (electric); chargers for electric batteries; hair-curlers, electrically heated; welding apparatus, electric; soldering irons, electric; solenoid valves (electromagnetic switches); measuring devices, electric; electrically heated hair curlers; locks (electric); transmitters of electronic signals; electronic security tags for goods; socks, electrically heated; electronic pens (visual display units); buzzers electric; electronic pocket translators; electronic organisers; electric door bells; door openers, electric; door closers, electric; monitoring apparatus, electric; compact discs (audio-video); receivers (audio and video); tone arms for record players; head cleaning tapes [recording]; tone arms for record players; sound recording apparatus; tape-recorders; sound locating instruments; sound carriers; sound transmitting apparatus; sound amplifiers; sound-reproducing apparatus; amusement apparatus adapted for use with television receivers; temperature indicators; video telephones; loudspeaker boxes; letter scales; compact disc players; television apparatus; telephone apparatus; motion picture cameras; film cutting apparatus; radiotelephony sets; signalling bells; altimeters; cassette players; compasses; headphones; laser pointers (luminous pointers); microphones; mobile telephones; modems; navigational instruments; lenses (optics); mouse pads (mouse mats); plotters; projection apparatus; projection screens; slide projectors, radios; smartcards (cards with integrated circuits); video games adapted for use with television receivers only; walkie talkies; video cameras; video recorders; 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.

Class 10: Electric acupuncture apparatus; electrodes for medical use; electrocardiographs; belts, electric, for medical purposes; heating cushions, electric, for medical purposes; thermoelectric compresses (surgery), thermal compresses (electric) for surgical purposes; electrical dental apparatus; aerosol dispensers for medical purposes; sphygmomanometers; hot air apparatus (therapeutic); lamps for medical purposes; massage apparatus.

Class 11: Electric heaters for baby bottles; electric lights for Christmas trees; pressure cookers (autoclaves), electric; electrically heated carpets; discharge tubes, electric, for lighting; sockets for electric lights; baby bottle warmers (electric); electric deep fryers; footmuffs, electrically heated; footwarmers (electric or non-electric); electric light bulbs; filaments for electric lamps; heating filaments (electric); electric heating apparatus; yoghurt-makers, electric; coffee filters, electric; electric coffee percolators; electric coffee percolators; cooking utensils (electric); sockets for electric lamps; filaments for electric lamps; electric lamps; electric discharge tubes for lighting; electric fans for personal use; radiators, electric; electric pressure cookers; electrically heated carpets; waffle irons, electric; electric laundry dryers; kettles (electric); flashlights (torches); ice machines and apparatus; bicycle lights; freezers, refrigerators; air-conditioning apparatus; refrigerating containers; microwave apparatus (cooking apparatus), warming plates; stoves; torches.

Class 16: Paper tapes and cards for the recording of computer programs; inking ribbons for computer printers; paper tapes and cards for the recording of computer programs; paper tapes and cards for recording computer programs; credit card printing apparatus, non-electric; pencil sharpeners (electric or non electric); pencil sharpeners (electric or non-electric); electrocardiograph paper; typewriters (electric or non-electric); pointers (non-electronic); non of the aforesaid goods being or featuring educational and/or entertainment content intended for general circulation.

Class 28: Stationary exercise bicycles; body-building apparatus; discuses for sports; kites; skating boots with skates attached; remote controlled vehicles; model vehicles (miniature); badminton sets; paragliders; appliances for gymnastics; dumb-bells; inline skates; machines for physical exercises; skateboards; tables for indoor football.

Class 42: Computer programming; conversion of data or documents from physical to electronic media; hiring out data-processing equipment; recovery of computer data; updating of computer software; computer consultancy; copying of computer programs; updating of computer software; computer software design; rental of computer software; consultancy in the field of computers; recovery of computer data; installation of computer programs, maintenance of computer software; computer systems design; systems analysis; design of computer systems; computer software design; design of computer systems; installation of computer programs; conversion of computer programmes and data (other than physical alteration); copying of computer programs; computer software rental; maintenance of computer software; recovery of computer data; conversion of data or documents from physical to electronic media; design and maintenance of websites for third parties.

The contested goods and services are the following:

Class 9: Photographic, cinematographic, optical, image processing apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; cameras; photographic cameras, film cameras, digital cameras; camera cases; camera housings, camera straps; bags for cameras and photographic equipment; lenses for cameras and camera accessories, such as lens hoods (for cameras), light filters for cameras, camera flashes.

Class 37: Photographic apparatus and camera repair; repair of photographic, cinematographic, optical, image processing apparatus and instruments, of apparatus for recording, transmission or reproduction of sound or images, of cameras, photographic cameras, film cameras, digital cameras.

Class 41: Rental of camera's; rental of photographic, cinematographic, optical, image processing apparatus and instruments of apparatus for recording, transmission or reproduction of sound or images and of cameras, photographic cameras, film cameras, digital cameras.

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

However, the term ‘exclusive of’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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

The contested photographic, image processing apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; photographic cameras overlaps with the opponent’s data-processing apparatus, 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. Therefore, they are identical.

The contested cinematographic, optical apparatus and instruments; cameras; film cameras, digital cameras overlaps with the opponent’s video cameras, 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. Therefore, they are identical.

The contested camera cases; camera housings, camera straps; bags for cameras and photographic equipment; lenses for cameras and camera accessories, such as lens hoods (for cameras), light filters for cameras, camera flashes are accessories especially designed for cameras and photographic equipment. The opponent’s video cameras, 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 are video cameras used in the context of, inter alia, computer and video board games. The goods under comparison are complementary and may share the same distribution channels of shops dedicated to the photographic and cinematographic sector. In addition, these goods may have the same producer. Therefore, they are similar to a low degree.

Contested goods in Class 37

Similarity between goods and their installation, maintenance or repair can only be found when it is common in the relevant market sector for the manufacturer of the goods to also provide such services, when the relevant public coincides, and/or when the installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not aftersales services).

The contested photographic apparatus and camera repair; repair of photographic, cinematographic, optical, image processing apparatus and instruments, of apparatus for recording, transmission or reproduction of sound or images, of cameras, photographic cameras, film cameras, digital cameras have the same distribution channels, relevant public and origin as the opponent’s motion picture cameras; video cameras; video recorders; data-processing apparatus, 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. Therefore, they are similar.

Contested goods in Class 41

Rental/leasing services are in principle always dissimilar to the goods rented/leased. For instance, vehicle rental (Class 39) and vehicles (Class 12) are dissimilar. However, there are exceptions where it is common for the manufacturer of the goods to provide rental services: for instance, the rental of automatic vending machines (Class 35) and automatic vending machines (Class 7) are considered to be similar to a low degree.

In light of the above, the contested rental of camera's; rental of photographic, cinematographic, optical, image processing apparatus and instruments of apparatus for recording, transmission or reproduction of sound or images and of cameras, photographic cameras, film cameras, digital cameras are services relating to the rental of apparatus used in the photographic and cinematographic sector, such as cameras, photographic cameras and film cameras. The opponent’s goods in Class 9 are, inter alia, motion picture cameras; video cameras; video recorders; data-processing apparatus, 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. Although goods such as cameras or video recorders are commonly rented, it is not common for camera manufacturers to directly provide rental services. Thus, the goods and services under comparison differ in nature, purpose and method of use. They are not complementary or in competition and do not share the same producer/provider.

Furthermore, the opponent’s remaining goods and services in Classes 7, 8, 9, 10, 11, 16, 28, 42 are very specific goods and services, with a different purpose and method of use than all the applicant’s services in Class 41. They are neither complementary nor in competition and have different producers/providers, end users and distribution channels. Therefore, the contested services in Class 41 and all the opponent’s goods and services in Classes 7, 8, 9, 10, 11, 16, 28, 42 are dissimilar.

2. 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 to various degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

3. The signs

LIFE	Life. Camera. Action!
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark has no elements that could be considered clearly more distinctive than other elements.

The contested mark ‘Life. Camera. Action!’ will be understood as a pun on the traditional cue to a film crew at the beginning of a take, namely ‘Lights, Camera, Action’, with the word ‘Lights’ being replaced by the word ‘Life’. In addition, the elements ‘Camera. Action!’ refer, respectively, to a piece of equipment used for taking photographs, making films, or producing television pictures (camera), and the word called out at the start of a take during filming to alert actors to begin performing (action!). Bearing in mind that the relevant goods and services are cameras and cinematographic instruments, and the repair of these goods, respectively, the contested sign’s elements ‘Camera. Action!’ are weak for these goods and services, specifically for all the applicant’s goods and services in Classes 9 and 37.

Conversely, the contested sign’s first word, ‘Life’, is distinctive for all the goods and services at issue.

Visually, the earlier sign is entirely reproduced in the first word of the contested sign ‘Life. Camera. Action!’. In this context it has to be noted that the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, they differ in the weak elements ‘Camera. Action!’, present only in the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LIFE’ present identically in both signs. The pronunciation differs in the sound of the letters of the weak elements ‘Camera. Action!’, present only in the contested mark.

Therefore, the signs are similar to an average degree.

Conceptually, the public in the relevant territory will perceive the earlier sign ‘LIFE’ as the period between birth and death. The contested mark will be understood as a pun on the traditional cue to a film crew at the beginning of a take, namely ‘Lights, Camera, Action’, with the word ‘Lights’ being replaced by the word ‘Life’. In addition, the weak elements ‘Camera’ and ‘Action!’ may be understood, respectively, as a piece of equipment used for taking photographs, making films, or producing television pictures, and the word called out at the start of a take during filming to alert actors to begin performing.

As the signs will be associated with a similar meaning, namely the meaning of the distinctive word ‘LIFE’, 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.

4. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The trade marks under comparison are visually, aurally and conceptually similar to an average degree. The goods and services are partly identical, partly similar, partly similar to a low degree and partly dissimilar. The relevant public is the public at large as well as professionals, and the degree of attention is average.

The earlier trade mark, ‘LIFE’, is entirely reproduced in the first, distinctive, word of the contested sign ‘Life. Camera. Action!’.

Although the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect, account is 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). Therefore, the Opposition Division —considering also that consumers generally tend to focus on the first element of a sign when confronted with a trade mark — deems that the differences between the signs, which lie in the weak components of the contested mark ‘Camera. Action!’, are clearly not sufficient to safely exclude the likelihood of confusion.

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 Union trade mark registration No 4 585 295. 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 and services found to be identical, similar or similar to a low degree to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

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

The Opposition Division

Andrea VALISA

Karin KUHL

Victoria DAFAUCE MENÉNEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.