Opera Ringtone | Decision 2733239
Date Published: Sep 24, 2017
OPPOSITION No B 2 733 239
Opera Software AS, Gjerdrums vei 19, 0484 Oslo, Norway (opponent), represented by Zacco Denmark A/S, Arne Jacobsens Allé 15, 2300 Copenhagen S, Denmark (professional representative)
a g a i n s t
LG Electronics Inc., 128 Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic of Korea (LA) (applicant), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).
On 16/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 733 239 is upheld for all the contested goods.
2. European Union trade mark application No 14 498 158 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 498 158 for the word mark ‘Opera Ringtone’. The opposition is based on European Union trade mark registration No 8 114 126 for the word mark ‘OPERA’. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 9: Computers; computer programs, inter alia, computer programs for global networks and other networks, presentation software, browsers, mobile phones, usb modems.
The contested goods are the following:
Class 9: Smart phones.
The contested smart phones have the same method of use as the opponent’s computers. They are also in competition with each other, have the same distribution channels, target the same relevant public and have the same producers. Therefore, they are similar to a high degree.
- 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 are directed at the public at large. The degree of attention will be average.
- The signs
OPERA | Opera Ringtone |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The element ‘OPERA’, present in both signs, and the element ‘RINGTONE’, present in only the contested sign, 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 such as the public in United Kingdom, Ireland and Malta.
The coinciding element ‘OPERA’ will be understood as ‘a dramatic work in one or more acts, set to music for singers and instrumentalists’ (Oxford Dictionary on 16/08/2017 https://en.oxforddictionaries.com/definition/opera) by the relevant public. As this meaning is not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
The element ‘RINGTONE’ of the contested sign will be associated with ‘a sound made by a mobile phone when an incoming call is received’ (Oxford Dictionary 03/08/2017). Bearing in mind that the relevant goods are smart phones, this element is non-distinctive, as it describes a function of the goods.
Both signs are word marks, which are protected in all different typefaces.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.
Visually and aurally, the signs coincide in the element ‘OPERA’, which constitutes the entire earlier mark. However, they differ in the non-distinctive element ‘RINGTONE’ at the end of the contested sign, which has no counterpart in the earlier mark.
The signs differ only in a non-distinctive element and the entire earlier mark is included in the contested sign. Therefore, the signs are visually and aurally highly similar.
Conceptually, the coinciding element ‘OPERA’ will be associated with the same meaning (see above). On account of the coincidence in the sematic content of the distinctive element ‘OPERA’ and considering that the additional element ‘RINGTONE’ in the contested sign is non-distinctive for the relevant goods, the signs are conceptually similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and, in particular, a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T-186/02, Dieselit, EU:C:2011:238, § 38).
The contested goods are highly similar. The signs are similar to a high degree on all three levels of the comparison.
Contrary to the applicant’s opinion and taking into account the high degree of similarity between the signs, the normal degree of distinctiveness of the earlier trade mark and the fact that the goods are identical and the degree of attention is average, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 114 126. It follows that the contested trade mark must be rejected for all the contested 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.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Tobias KLEE | Magnus ABRAMSSON | Sigrid DICKMANNS |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.