Path Partner | Decision 2733353
Date Published: Sep 25, 2017
OPPOSITION No B 2 733 353
Thales Underwater Systems SAS, 525, route des Dolines, Parc de Sophia Antipolis, 06560 Valbonne, France (opponent), represented by Marks & Clerk France, Immeuble ‘Visium’ 22, avenue Aristide Briand, 94117 Arcueil Cedex, France (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 20/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 733 353 is partially upheld, namely for the following contested goods:
Class 9: Display panels for vehicle; Display for vehicle; Computer application for automotive electronic control; Car automatic driving control device; Computer application for car automatic driving control; Automated car parking control device; Computer application for automated car parking control; Control device for car audio video navigation; Computer application for car audio video navigation; Operating system programs; Computer software; Tablet computer; Software for mobile phones; Engine control sensors; Position fixing sensors; Position determining sensors; Automatic vehicle speed control device; Rotation measuring and controlling sensors; Acceleration determining sensors; Recorded computer software for safe car driving; Navigation computers for cars; Image processing software for in-vehicle camera; Car multi camera; Display monitor for providing all-around view including dead zone for a vehicle; Video processor for providing all-around view including dead zone for a vehicle; Computer program for providing all-around view including dead zone for a vehicle; Communications apparatus for vehicles; Radar systems; Radar antennas; Laser sensors; Drive assist and safety device and system, namely adaptive smart cruise control, forward collision warning system, autonomous emergency brake, backward collision warning system, lane departure warning system, lane keep assist system, blind spot detection system; Parking assist device and system, namely smart parking assist system, rear camera, forward-backward parking sensor; Advanced driving visibility device and system, namely night vision device; Advanced driving visibility device and system, comprised of night vision device, adaptive high beam assist, dynamic bending light.
Class 12: Vehicles; Stability control systems for vehicles.
2. European Union trade mark application No 15 237 654 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 15 237 654. The opposition is based on European Union trade mark registration No 14 580 617. 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 the following:
Class 9: Nautical, measuring, signalling, geolocation and identification apparatus and instruments for vehicles, targets or obstacles; Radar apparatus; Sonars; Metal detectors for industrial or military purposes.
Class 12: Military drones; Civilian drones.
The contested goods are the following:
Class 9: Display panels for vehicle; Display for vehicle; Computer application for automotive electronic control; Car automatic driving control device; Computer application for car automatic driving control; Automated car parking control device; Computer application for automated car parking control; Control device for car audio video navigation; Computer application for car audio video navigation; Operating system programs; Computer software; Tablet computer; Software for mobile phones; Engine control sensors; Position fixing sensors; Position determining sensors; Automatic vehicle speed control device; Rotation measuring and controlling sensors; Acceleration determining sensors; Recorded computer software for safe car driving; Navigation computers for cars; Image processing software for in-vehicle camera; Car multi camera; Video recording apparatus for vehicles; Display monitor for providing all-around view including dead zone for a vehicle; Video processor for providing all-around view including dead zone for a vehicle; Computer program for providing all-around view including dead zone for a vehicle; Communications apparatus for vehicles; Radar systems; Radar antennas; Laser sensors; Drive assist and safety device and system, namely adaptive smart cruise control, forward collision warning system, autonomous emergency brake, backward collision warning system, lane departure warning system, lane keep assist system, blind spot detection system; Parking assist device and system, namely smart parking assist system, rear camera, forward-backward parking sensor; Advanced driving visibility device and system, namely night vision device; Advanced driving visibility device and system, comprised of night vision device, adaptive high beam assist, dynamic bending light.
Class 12: Self-driving cars; Automatic-driving cars; Autonomous cars; Driving control unit for automobiles; Automobiles, Driverless cars [autonomous cars]; Cars; Vehicles; Traction control systems for vehicles; Stability control systems for vehicles; Pneumatic transmission control systems for vehicles; Alarm systems for vehicles; Braking systems for vehicles.
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 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 display panels for vehicle; display for vehicle; car automatic driving control device; automated car parking control device; control device for car audio video navigation; engine control sensors; position fixing sensors; position determining sensors; automatic vehicle speed control device; rotation measuring and controlling sensors; acceleration determining sensors; laser sensors; drive assist and safety device and system, namely adaptive smart cruise control, forward collision warning system, autonomous emergency brake, backward collision warning system, lane departure warning system, lane keep assist system, blind spot detection system; parking assist device and system, namely smart parking assist system, rear camera, forward-backward parking sensor; advanced driving visibility device and system, namely night vision device; advanced driving visibility device and system, comprised of night vision device, adaptive high beam assist, dynamic bending light are apparatus and instruments for measuring, checking and controlling the operation of vehicles to make driving and navigation easier and safer. One of their main aims is to avoid collisions and accidents by offering technologies that alert the driver to potential problems, or to avoid collisions by implementing safeguards and taking over control of the vehicle. These contested goods are identical or similar to the opponent’s measuring, signalling apparatus and instruments for vehicles, targets or obstacles, as some of these contested goods, such as rotation measuring and controlling sensors, are included in the broad category of, or overlap with, the opponent’s goods and others can have similar purposes and the same producers, relevant public and distribution channels as the opponent’s goods.
The opponent’s geolocation apparatus and instruments for vehicles are devices used for determining the device’s geographical location and, therefore, to detect the direction of travel of an automobile. These kinds of apparatus, which are composed of an electronic device and a software application, besides indicating the direction, are also able to indicate the roads or paths available, traffic congestion and alternative routes, the shortest route between the two locations, etc. to facilitate drivers’ navigation. The contested computer application for automotive electronic control; computer application for car automatic driving control; computer application for automated car parking control; computer application for car audio video navigation; operating system programs; computer software; tablet computer; software for mobile phones; recorded computer software for safe car driving; navigation computers for cars; image processing software for in-vehicle camera; video processor for providing all-around view including dead zone for a vehicle; computer program for providing all-around view including dead zone for a vehicle are identical or similar to the abovementioned opponent’s goods, as some of these contested goods, such as navigation computers for cars, are included in or overlap with the opponent’s goods and others, such as tablet computer; computer software, can be manufactured by the same specialist companies in the field of electronics and can have the same relevant public and distribution channels as the opponent’s goods.
The contested radar system is an object detection system that uses radio waves to determine the range, angle and velocity of objects. The contested radar antenna is a part of a radar system that transmits and receives signals. They can be used to detect aircraft, ships, spacecraft, etc. The contested communications apparatus for vehicles are apparatus that allow communication between vehicles such as ships, aircraft, etc. Since these contested goods overlap with the opponent’s nautical apparatus and instruments, they are identical.
The contested display monitor for providing all-around view including dead zone for a vehicle; car multi camera are devices that provide better views while one is driving a vehicle. They are similar to a low degree to geolocation and identification apparatus and instruments for vehicles, as they can have the same relevant public and distribution channels.
The contested video recording apparatus for vehicles are apparatus used to record what happens during collisions involving two or more vehicles, to provide evidence in related administrative or judicial procedures. They are dissimilar to the opponent’s goods in Classes 9 and 12, as they have different natures, purposes and methods of use. They do not usually have the same suppliers or producers or the same distribution channels.
Contested goods in Class 12
The contested vehicles include, as a broader category, the opponent’s civilian drones. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested stability control systems for vehicles are similar to the opponent’s civil drones, as they can have the same relevant public and distribution channels. Furthermore, they are complementary.
All the other contested goods are dissimilar to the opponent’s goods in Class 12. In particular, even though the contested self-driving cars; automatic-driving cars; autonomous cars; automobiles, driverless cars [autonomous cars]; cars are vehicles, they do not have anything relevant in common with the opponent’s military drones, civil drones, as they are completely different kinds of vehicles. The opponent’s drones are unmanned aerial vehicles, autonomously or remotely guided, without a pilot inside. Their use is rapidly expanding to commercial, scientific, recreational, agricultural and other applications, such as policing, peacekeeping and surveillance. The contested goods are road vehicles, typically with four wheels, which are able to carry a small number of people and are characterised by being driverless or self-driving cars capable of sensing their environment and navigating without human input. Apart from the fact that these goods can be autonomously guided, they do not have much in common, as their purposes are different. Moreover, they are not complementary to or in competition with each other, they are not provided through the same channels and they do not target the same consumers. Therefore, they are dissimilar. These contested goods are also dissimilar to all the opponent’s goods in Class 9, as they have different natures, purposes and methods of use. They do not usually have the same suppliers, producers or distribution channels.
- 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 relevant goods are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
- The signs
PathMaster | Path Partner |
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 common element ‘Path’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and French-speaking parts of the public, for which this element is meaningless.
The earlier mark is the word mark ‘PathMaster’. The relevant public may perceive one-word signs as being composed of different elements, in particular where one part has a clear and evident meaning. In the present case, the word ‘Master’ has a clear meaning for the relevant public, since it will be understood as referring to ‘a postgraduate specialisation course’. Therefore, the verbal element ‘PathMaster’ will split into two parts: ‘Path’ and ‘Master’.
The word element ‘Path,’ included in both marks, is meaningless and is therefore distinctive for the relevant goods. The word ‘Master’ is not descriptive or allusive for the relevant goods and, therefore, it is distinctive.
The contested mark is composed of the words ‘Path Partner’. The word ‘Partner’ is an English word that is likely to be understood by the relevant public as ‘partner in a firm or business’ or as ‘partner in a marriage or in other kinds of relationship’. This verbal element is distinctive, as it is not descriptive or allusive with respect to the relevant goods.
Because they are word marks, neither of them has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually and aurally, the signs coincide in the word/sound ‘Path’, present in the same position in both marks. The fact that the first parts of the marks are identical is particularly important, considering that consumers generally tend to focus on the first element of a sign when encountering a trade mark. On the other hand, they differ in their second words, ‘Master’ in the earlier mark and ‘Partner’ in the contested sign. These word elements coincide in some letters/sounds, namely ‘A’ and ‘T’ in the second and fourth positions in both words and ‘ER’ at the end of both words, while they differ in the other letters/sounds.
Bearing in mind the above considerations, it is concluded that the degree of visual and aural similarity between the marks is average.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are not conceptually similar, as the earlier mark will be associated with the concept of the word ‘Master’ and the contested sign will be associated with the concept of the word ‘Partner’.
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
The goods are partly identical, partly similar and partly dissimilar. The degree of attention may vary from average to high. The distinctiveness of the earlier marks is normal.
As explained in detail in section c) above, the signs are visually and aurally similar to an average degree, while they are not conceptually similar.
The visual and aural similarities result from the coinciding verbal element ‘Path’, which is at the beginning of both signs. Therefore, the public will focus more on this completely coinciding element than on the other verbal elements, namely ‘Master’ in the earlier mark and ‘Partner’ in the contested sign, which are in the second position in the signs. Moreover, these elements coincide in some letters/sounds, as explained in section c) of this decision.
Taking into account the above, the similarities resulting from the verbal element that the marks have in common, ‘Path’, and from the partial commonalities of the elements ‘Master’ and ‘Partner’ are sufficient to counteract the differences arising from the differing elements of the signs.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
In the present case, it is conceivable that the mark applied for will be perceived as a sub-brand, a variation of the earlier mark configured in a different way according to the type of goods it designates. It is quite possible for an undertaking to use sub-brands – that is to say, signs that derive from a principal mark and have an element in common with it – to distinguish various lines from one another.
Therefore, the relevant public, including the part with a high degree of attention, is likely to think that the goods found to be identical or similar, if they bear the marks at issue, belong to two ranges of goods from the same undertaking or economically related undertakings.
This is also true for the contested goods that are similar to a low degree to the earlier goods. In this regard, a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs, and vice versa. Therefore, the average degree of visual and aural similarity between the signs is sufficient to offset the low degree of similarity of the contested goods and to lead to a likelihood of confusion on the part of the public with regard to these goods.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian- and French-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 580 617. 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 varying degrees 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.
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
María Belén IBARRA DE DIEGO | Angela DI BLASIO | Francesca CANGERI SERRANO |
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.