Mercury | Decision 2677642
Date Published: Sep 25, 2017
OPPOSITION No B 2 677 642
Franz Harrer, Hochfellnstrasse 6, 83346 Bergen, Germany (opponent)
a g a i n s t
LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic of Korea (applicant), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).
On 11/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 677 642 is partially upheld, namely for the following contested goods:
Class 9: Telecommunication converters; smart phones; smart phone rings; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; display for mobile phones; display modules for mobile phones; wearable smart phones; tablet PC; computer; portable computers; notebook PC; wireless headset for mobile phones; liquid crystal protective film for smart phones; mobile phones cases; flip cover for mobile phones; universal serial bus (USB) dongle (wireless network adapters); transmitters and receivers of electronic signals; adapters for wireless network access; server for home network system; modems; wireless routers; antennas for wireless communications apparatus; mobile phones; telecommunication machines and implements; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; home automation device; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; home network devices; cloud server; wireless communication apparatus; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; watch bands combined with sensor; none of the aforesaid goods in the field of intralogistics.
Class 14: Watches; electronic watches; watches with wireless communication function; watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics.
2. European Union trade mark application No 14 830 459 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 14 830 459. The opposition is based on, inter alia, European Union trade mark registration No 10 690 972. The opponent invoked Article 8(1)(a) and (b) EUTMR.
PRELIMINARY REMARKS
On 21/06/2016, the applicant filed a limitation request and Classes 9 and 14 were limited as detailed below. The opponent was duly informed and the opposition was maintained. Consequently, the opposition is directed against all the goods in Classes 9 and 14.
On 14/05/2017, the opponent claimed that the use without due cause of the contested mark would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier mark. However, the opponent made this claim after the expiry of the time limit set for this purpose. Consequently, The Opposition Division will not take this ground into account in the examination of the opposition.
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 10 690 972.
- The goods
The goods on which the opposition is based are the following:
Class 9: Ergometers and physiological power meters; Lactate meters; dynamometers; Software for the documentation, visualisation, calculation and analysis of the blood lactate values and performance status of test persons/patients with integrated functions for training control and the evaluation of sports medical parameters, and for the control of ergometers; software for the documentation, visualisation, calculation and analysis of body movements, power trend curves, velocity trend curves, angular velocities, as well as ground reaction forces and the performance status of test persons/patients with integrated functions for training control and the evaluation of sports medical parameters, and for the control of ergometers; software for ergometric apparatus for cardio-respiratory diagnostics and cardiovascular training; apparatus for measuring and improving reaction time, namely contact mats and optical sensors in conjunction with software and optical and acoustic signals and biofeedback apparatus; software for the documentation and control of rehabilitative and sports medical activities; control software for all the aforesaid instruments and apparatus, and for peripheral devices therefor; electronic publications (downloadable); pedometers, step counters; equipment and apparatus for the optical and magnetic recording and processing of data relating to movement processes; interface converters and interface data protocols for all the aforesaid instruments and apparatus, and for peripheral devices therefor; strength-measuring apparatus, weight and pressure-measuring apparatus; control software for all the aforesaid instruments and apparatus, and for peripheral devices therefore.
Class 10: Walking bars (parallel bars); strain-relief (unweighting) apparatus with patient jackets and traction apparatus, and physical therapy apparatus for the locomotion and mobilisation of patients; wheelchair ergometers, medical treadmill ergometers and other medical ergometers for rehabilitation, cardiology and ergospirometry (for exercise tolerance tests); wheelchair trainers for orthopedic training, orthopedic rehabilitation, mobilisation and for muscle building; cable control apparatus with weights and electronically controlled load simulation, for rehabilitation purposes; rehabilitation apparatus; cable control apparatus and power training equipment for physiotherapy; transport apparatus, namely hydraulic arms, pneumatic arms and electromechanically operated arms and legs for the disabled; active and passive movement apparatus for rehabilitation purposes (motor-operated apparatus for moving limbs); cardiovascular, cardiographic, respiratory, monitoring and recording instruments; apparatus for measuring pulse, heart, brain and nerve functions; parts and spare parts for all the aforesaid instruments and apparatus.
Class 28: Gymnastic and sporting articles; computerized treadmills; ladder apparatus (continuous ladders, climbing equipment); bicycle trainers; steppers; arm trainers; cross-trainers; swimming simulation training equipment; sprint trainers (traction support and traction resistance trainers); gymnastic and sporting articles, not included in other classes, fitness apparatus; electronic, mechanical, hydraulic and pneumatic power training equipment and endurance training equipment; parallel bars for gymnastics.
The contested goods are the following:
Class 9: Smart phones; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; display for mobile phones; display modules for mobile phones; semiconductor chips; application processors; wearable smart phones; tablet PC; computer; printers for use with computers; portable computers; notebook PC; monitors (computer hardware); monitors for commercial purpose; digital signage; wearable Computer; television receivers; Display for television receivers; Display modules for television receivers; TV remote controls; LED displays; 3D spectacles for television receivers; OLED Display; wireless headsets; headset; wireless headset for mobile phones; ear phones; audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; apparatus for the recording/transmission or reproduction of sound and images; network attached storage; chargers for electric batteries for smart phones (wireless chargeable); liquid crystal protective film for smart phones; smart phone rings; power supplies for smart phones; DVD player; optical disc player; handheld media players; handheld CD players; mobile phones cases; supporting speaker for mobile phones; flip cover for mobile phones; tablet computers cases; flip cover for tablet computers; batteries for mobile phones; battery chargers for mobile phones; supporting battery for mobile phones; chargeable batteries; battery compensation chargers; battery charge devices; mouse (computer peripheral); keyboards; USB hardware; universal serial bus (USB) dongle (wireless network adapters); digital set top boxes; digital cameras; network surveillance cameras; motion recognizing sensors; gyro sensors using GPS functions; motion detectors; invader sensors; privacy protection sensors; alarm sensors for refrigerators; alarm sensors for washing machines; range sensor; digital sensory devices; object detecting sensors; sensor controllers; pressure sensors; sensors for measuring instruments; window opening and closing detecting sensors; door opening and closing detecting sensors; remote control apparatus; transmitters and receivers of electronic signals; adapters for wireless network access; multi-function touch buttons; sensor station; audio speakers; digital door locks; remote controls for controlling electronic products; home network devices; electronic security system for home network; home automation device; interfaces and peripheral devices for computers; cloud server; server for home network system; server for home automation; digital audio interface apparatus; wireless audio/video receivers; wireless communication apparatus; remote multi switches; oscillation sensor devices; air pollution measuring devices; measuring and control devices for air conditioning technology; air measuring apparatus; dust measuring apparatus; weight scales not for medical purposes; measuring apparatus not for medical purposes; automatic control apparatus and instruments; light switches; electric power distribution apparatus; apparatus for improving power efficiency; apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; lighting control apparatus; apparatus for diagnosing electrical power installations; apparatus for measuring/monitoring/analyzing electricity consumption; electric wire and cable; digital audio and video recorders and players; speaker systems; electric audio and visual apparatus and instruments; handheld multimedia players; modems; wireless routers; antennas for wireless communications apparatus; remote air conditioning control devices; telemetric apparatus and instruments; remote control telemetering machines and apparatus; mobile phones; telecommunication machines and implements; remote control apparatus for controlling lighting; telecommunication converters; digital electronic controllers; plugs; sockets, plugs and other contacts (electric connectors); solar cell wafer; modules for photovoltaic power generation; solar wafers; solar batteries; crystalline silicon solar power cells; solar cell plates; solar cell panels; solar power panel for generation; solar panels for electricity generation; solar panels for the production of electricity; inverter used in solar power generation; accumulators for photovoltaic power; electric control devices for heating and energy management; computer hardware modules for use in internet of things electronic devices; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; watch bands combined with sensor; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics.
Class 14: Watches; parts and fittings for watches; wristwatches; electronic clocks and watches; bracelets with precious metal; watch bands; control clocks; watches with wireless communication function; watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; watches incorporating cameras and mp3 players, and that communicate data to smart phones and PDAs; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the applicant’s and the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 9
The contested telecommunication converters; smart phones; smart phone rings; portable communications apparatus namely handsets, walkie-talkies, satellite telephones and personal digital assistants [PDA]; display for mobile phones; display modules for mobile phones; wearable smart phones; tablet PC; computer; portable computers; notebook PC; wireless headset for mobile phones; liquid crystal protective film for smart phones; mobile phones cases; flip cover for mobile phones; universal serial bus (USB) dongle (wireless network adapters); transmitters and receivers of electronic signals; adapters for wireless network access; server for home network system; modems; wireless routers; antennas for wireless communications apparatus; mobile phones; telecommunication machines and implements; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; home automation device; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; home network devices; cloud server; wireless communication apparatus; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; watch bands combined with sensor; none of the aforesaid goods in the field of intralogistics are different types of data processing equipment and accessories, and they are similar to the opponent’s equipment and apparatus for the optical and magnetic recording and processing of data relating to movement processes, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.
The contested network attached storage; USB hardware; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; remote control telemetering machines and apparatus; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics are goods intended for storing information by virtue of differing patterns of magnetisation or for measuring, detecting and monitoring machines and apparatus, and they are dissimilar to the opponent’s goods in Classes 9, 10 and 28, since they have different natures, purposes and distribution channels. They are neither complementary nor in competition. They are produced by different companies.
The contested digital door locks; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics are goods intended to ensure the safety, security and protection of a building. Therefore, they are dissimilar to the opponent’s goods in Classes 9, 10 and 28, since they have different natures, purposes and distribution channels. They are neither complementary nor in competition. They are produced by different companies.
The contested digital signage; television receivers; remote controls for controlling electronic products; display for television receivers; display modules for television receivers; LED displays; OLED display; wireless headsets; headset; TV remote controls; 3D spectacles for television receivers; ear phones; audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; apparatus for the recording/transmission or reproduction of sound and images; DVD player; handheld media players; handheld CD players; supporting speaker for mobile phones; digital set top boxes; digital cameras; network surveillance cameras; audio speakers; digital audio interface apparatus; wireless audio/video receivers; speaker systems; electric audio and visual apparatus and instruments; digital audio and video recorders and players; handheld multimedia players; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics fall into the broader category of audiovisual and photographic devices. These goods and the opponent’s goods in Classes 9, 10 and 28 have different natures, specific purposes and methods of use. In addition, the contested goods and the opponent’s goods are usually distributed through different channels. Therefore, they are dissimilar.
The contested electric power distribution apparatus; apparatus for improving power efficiency; semiconductor chips; multi-function touch buttons; remote multi switches; electric wire and cable; plugs; sockets, plugs and other contacts (electric connectors); chargers for electric batteries for smart phones (wireless chargeable); power supplies for smart phones; batteries for mobile phones; battery chargers for mobile phones; supporting battery for mobile phones; chargeable batteries; battery compensation chargers; battery charge devices; light switches; apparatus and instruments for conveying, distributing, transforming, storing, regulating or controlling electric current; solar cell wafer; modules for photovoltaic power generation; solar wafers; solar batteries; crystalline silicon solar power cells; solar cell plates; solar cell panels; solar power panel for generation; solar panels for electricity generation; solar panels for the production of electricity; inverter used in solar power generation; accumulators for photovoltaic power; electric control devices for heating and energy management; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics are goods that relate to apparatus, instruments and cables for electricity; therefore, these goods have nothing in common with the opponent’s goods in Classes 9, 10 and 28. They have different purposes, producers and distribution channels. Furthermore, they are neither in competition nor complementary. Therefore, they are dissimilar.
The contested motion recognizing sensors; gyro sensors using GPS functions; motion detectors; invader sensors; privacy protection sensors; alarm sensors for refrigerators; alarm sensors for washing machines; range sensor; digital sensory devices; object detecting sensors; sensor controllers; pressure sensors; sensors for measuring instruments; window opening and closing detecting sensors; door opening and closing detecting sensors; sensor station; remote control apparatus; oscillation sensor devices; measuring and control devices for air conditioning technology; air pollution measuring devices; measuring and control devices for air conditioning technology; air measuring apparatus; dust measuring apparatus; weight scales not for medical purposes; measuring apparatus not for medical purposes; automatic control apparatus and instruments; lighting control apparatus; apparatus for diagnosing electrical power installations; apparatus for measuring/monitoring/analyzing electricity consumption; remote air conditioning control devices; telemetric apparatus and instruments; remote control apparatus for controlling lighting; digital electronic controllers; electronic security system for home network; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics are measuring, detecting and monitoring instruments, indicators and controllers that have no relation to any of the opponent’s goods in Classes 9, 10 and 28, since they have different natures, specific purposes and methods of use. In addition, the contested goods and the opponent’s goods are usually distributed through different channels. Therefore, they are dissimilar.
The contested interfaces and peripheral devices for computers; application processors; printers for use with computers; wearable computer; monitors (computer hardware); monitors for commercial purpose; optical disc player; tablet computers cases; flip cover for tablet computers; mouse (computer peripheral); keyboards; server for home automation; computer hardware modules for use in internet of things electronic devices; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics are dissimilar to all the opponent’s goods in Classes 9, 10 and 28. The nature, purpose and method of use of the contested goods are different from those of the opponent’s goods. They do not have the same distribution channels and they are not in competition. Furthermore, these goods are not usually provided by the same companies.
Contested goods in Class 14
The contested watches; electronic watches; watches with wireless communication function; watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics could include or overlap with smart watches because the application was made in accordance with the 10th edition of Nice Classification, in which smart watches are included in Class 14; therefore, the contested goods are similar to the opponent’s equipment and apparatus for the optical and magnetic recording and processing of data relating to movement processes, as they can have the same producers, end users and distribution channels.
The contested parts and fittings for watches; wristwatches; electronic clocks; bracelets with precious metal; watch bands; control clocks; none of the aforesaid goods in relation and in connection with sprint-training devices, treadmills, ergometers and other fitness, sports, athletic, biomechanics, sports science, medical, rehabilitation, therapy, ergometry and performance diagnostic goods and applications; none of the aforesaid goods in the field of intralogistics are clocks and their parts, the function of which is merely to display the time or, in the case of control clocks, to display a central time, on the basis of which other clocks are controlled. Some of these goods, namely wristwatches and bracelets with precious metal, are or may be used as fashion items or accessories. These goods, therefore, have different purposes from all the opponents’ goods in Classes 9, 10 and 28. They usually have different manufacturers and distribution channels and they target different publics. Furthermore, they are not complementary or in competition. Therefore, these contested goods and the opponent’s goods in Classes 9, 10 and 28 are dissimilar.
- The signs
mercury | Mercury |
Earlier trade mark | Contested sign |
The signs are identical, as the difference in the use of lower and upper case letters is immaterial.
- Global assessment, other arguments and conclusion
The signs are identical and some of the contested goods are similar to the opponent’s goods.
In accordance with settled case-law and following the well-established practice of the Office, evaluation of 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).
Bearing in mind the abovementioned principle and considering the identity between the signs, the opposition is successful insofar as it is directed against goods found to be similar, as the identity between the marks is sufficient for the consumers to be confused about the commercial origin of the goods in question.
Considering the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 10 690 972.
It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.
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.
For the sake of completeness, it must be mentioned that, in relation to these goods, the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the contested goods were not found to be identical to the opponent’s goods.
The opponent has also based the opposition on German trade mark registration No 302 011 017 064 for the word mark ‘mercury’. Since this mark is identical to the one which has been compared and covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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 will decide a different apportionment of costs.
Since the opposition is successful only for part 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
Katarzyna ZANIECKA | Alexandra APOSTOLAKIS | Adriana VAN ROODEN |
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.