W9 | Decision 2646472
Date Published: Sep 28, 2017
OPPOSITION No B 2 646 472
Edi-TV, 89, avenue Charles de Gaulle, 92575 Neuilly sur Seine Cedex, France (opponent), represented by Deprez Guignot & Associes, 21, rue Clément Marot, 75008 Paris, France (professional representative)
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 26/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 646 472 is upheld for all the contested goods, namely:
Class 9: Smart phones.
2. European Union trade mark application No 14 707 591 is rejected for all the above goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 707 591, namely against all the goods in Class 9. The opposition is based on French trade mark registration No 4 072 246. 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 and services
The goods and services on which the opposition is based are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), emergency (rescue) and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound, data or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; data processing equipment, computers; peripherals of computers; calculating machines; audiovisual, telecommunications and telematics apparatus and instruments; televisions, tape recorders, radios, projectors, car stereo, antennas, satellite dishes, speakers, amplifiers, audio systems, microphones, telephones and films; magnetics and video tapes; audio and video compacts-discs; CDs; software; game software; video game cartridges; magnetic cards; magnetic and optic data medias; interfaces (for computers); downloadable electronic publications.
Class 38: Telecommunications; radio, telegraph, telephone and television communications; e-mail services; communications via internet; television and radio broadcasting; communications by computer terminals; transmission of data, text, sounds, and images via national and international communication networks; computer aided transmission of messages and images; transmission services of information and audio or visual data, contained in databases; providing access to a global computer network; providing access to databases; leasing time access to global computer networks; communications by fiber optic networks; providing discussion forums on the internet; information on telecommunications; rental of telecommunication apparatus; telephone services.
The contested goods are the following:
Class 9: Smart phones.
The contested smart phones are included in the broad category of the opponent’s telephones. Therefore, they are identical.
- 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 may average to higher than average depending the price of the goods.
- The signs
W9 WEB AWARDS | W9 |
Earlier trade mark | Contested sign |
The relevant territory is France.
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).
Both signs are verbal marks, consisting of the combination ‘W9 WEB AWARDS’ (the earlier mark), respectively ‘W9’ (the contested mark).
The common element ‘W9’ of the both marks will be perceived as the combination of the letter ‘W’ and the numeral ‘9’ and has no meaning for the relevant public and is, therefore, distinctive.
The element ‘WEB’ of the earlier mark will be associated by the relevant public with ‘world wide web’. Bearing in mind that the relevant goods are telephones, which include smart phones which are used to access the internet, this element is weak for these goods. The element ‘AWARDS’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.
Therefore, the elements ‘W9’ and ‘AWARDS’ of the earlier mark are the most distinctive elements of the mark.
The common element ‘W9’ is placed at the beginning of the earlier mark. 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, the signs coincide in the element ‘W9’ of which the contested mark is solely composed. However, they differ in the elements ‘WEB’ (found to be weak for all the relevant goods) and ‘AWARDS’ of the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the combination of letters and numbers, ‛W9’, present identically in both signs. The pronunciation differs in the sound of the additional verbal elements, ‛WEB’ and ‘AWARDS’ of the earlier sign, which have no counterparts in the contested mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘W9’, included in both signs, will be associated with the meaning explained above. To that extent, 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.
- 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods are identical and are directed at the public at large. The degree of attention may average to higher than average, depending the price of the goods.
The Opposition Division has concluded that there are visual, aural and conceptual similarities between the signs under comparison to the extent that they both contain the element ‘W9’, which is the only element of the contested mark and is placed at the beginning of the earlier mark. The signs differ in the elements ‘WEB’ (found to be weak for all the relevant goods) and ‘AWARDS’ of the earlier mark.
As mentioned above, consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. Therefore, the identity, between the element ‘W9’ placed at the beginning of earlier mark and the sole element of the contested mark, should be taken into account when assessing the likelihood of confusion between the marks.
In addition, account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). The fact that the sole element of the contested mark is entirely included in the earlier sign may lead the public to believe that the goods at issue derive, at the very least, from companies that are economically linked.
Moreover, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between the 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).
In the present case, the identity between the goods offsets any lesser degree of similarity between the signs.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 072 246. 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
Cristina CRESPO MOLTO | Francesca DINU | Janja FELC |
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.