• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Dr. Christoph Hölscher
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Unionmark LIFE versus LIFE COINS victorious

2. November 2018

Medion AG won the LIFE trade mark dispute against LIFE COINS. The judgment of the European Court of Justice not only highlights the likelihood of confusion between Union word marks, but also between goods in Nice Class 38 for telecommunications services and Nice Class 9 for, inter alia, modems, mobile telephones and computers.

Opposition by the proprietor of the earlier Unionmark

Medion AGOn 28 January 2014, the German applicant CompuGroup Medical AG filed an application for the Union word mark LIFE COINS for goods and services in Nice Classes 9, 38, 41, 42, 44 and 45. On 19 May 2014, the German intervener Medion AG,  filed a partial opposition against the application for registration in respect of the following goods and services in Classes 9, 38 and 42: the opposition was based on the earlier Union word mark LIFE of Medion AG, which was registered on 9 February 2015, with a date of application for registration of 10 August 2005, under number 4585295, for numerous goods and services in Classes 7 to 11, 16, 28 and 42.
In June 2016, the Opposition Division upheld Medion AG’s opposition in respect of all the goods and services except “medical laboratory services” (Class 42). The plaintiff filed an appeal against the decision with the EUIPO on August 2016, which was partially successful. By decision of 25 April 2017 (contested decision), the Board of Appeal largely upheld the recognition of the opposition, but annulled the decision of the Opposition Division in so far as it concerned the “collection and delivery of news (press agencies)” in Nice Class 38. That was not sufficient for the applicant.

Opposition based on Nice Classe 9 but against Nice Classe 38

The applicant claimed that the goods and services covered by the earlier mark LIFE and the goods in Class 9 covered by the contested mark were not identical or similar. That concerns a whole series of goods and services in Classes 38 and 42 in respect of which the contested mark is claimed. However, the Court of First Instance rejected that argument as inadmissible, since it was the first time that the applicant had made use of that argument on behalf of the CJEU. The Court emphasised that the pleadings of the parties submitted in the course of the proceedings before the CJEU could not alter the subject-matter of the proceedings before the Board of Appeal. The CJEU therefore confined itself to an assessment of the services in Class 38 claimed by the challenged mark.

The Opposition Division’s and the Board of Appeal’s finding that the goods and services in Classes 9 and 42 are identical cannot be reviewed. And the Board of Appeal rightly held that the services in Class 38 are telecommunications services which, by their very nature, are complementary to the telecommunications equipment (Class 9), such as “modems”, “mobile telephones” and “computers”, and are therefore similar to them.

LIFE pupular as word mark

The Court has already held that the term “life” is part of the English basic vocabulary (judgment of 12 February 2015 in Case T-318/13 Vita Phone v OHIM (LIFEDATA), not published, EU:T:2015:96). LIFE is not descriptive of the goods and services in respect of which the earlier Medion AG mark has been registered, according to the CJEU. For the goods and services concerned, the term has no meaning and is therefore of average distinctiveness. The Court also rejected the applicant’s argument that the term “life” appeared in more than 8 000 registered marks and that therefore were doubts as to the average distinctiveness of the element “LIFE”, since no evidence was produced to support that claim.

Aural and visual similarity between the marks in dispute

Accordingly, the Court of First Instance examined the phonetic and visual similarity between the two marks at issue. According to settled case-law, consumers generally pay more attention to the beginning of a mark than to its end and generally remember the beginning of a sign better than its end, the Court argued. The additional element “coins” in the mark applied for does not dominate the overall impression created by the mark in the mind of the relevant public. Therefore, the marks are visually and phonetically similar.

The action brought by CompuGroup Medical AG was therefore dismissed in its entirety.

Would you also like to protect your brand or trademark?

Then please do not hesitate to contact us. Our patent attorneys and attorneys at law are experienced and highly qualified in all areas of intellectual property law, both nationally and internationally.

Request your call-back without any obligations!

CAT-call_en

Sources:

T:2018:681 CompuGroup Medical AG vs Medion AG

Picture:

byrev /pixabay.com / CCO License  

  • share  
  • share 
  • share 
  • tweet 
  • share 

Category iconTrademark Law,  International Intellectual Property Tag icontelecommunications equipment,  similarity,  mobile telephones,  earlier brand,  modems,  complementary,  computers,  LIFE,  LIFE COINS,  wordmark,  Medion AG,  likelihood of confusion,  CompuGroup Medical AG,  EUIPO,  Nice Classe 9,  Unionmark,  Nice Classe 38,  telecommunications services

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Trademark Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law

Recent Posts

  • BPatG: Patent claim of cancer drug on active substance as salt 7. March 2022
  • Grant for European IP Protection: SME Fund 2022 4. March 2022
  • CODE-X vs. Cody’s: Likelihood of confusion in drinks? 25. February 2022
  • EOS lip balm no 3D trademark – appeal before ECJ not admissible 24. February 2022

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

4. March 2022
Grant for European IP Protection: SME Fund 2022

Grant for European IP Protection: SME Fund 2022

25. February 2022
CODE-X vs. Cody’s: Likelihood of confusion in drinks?

CODE-X vs. Cody’s: Likelihood of confusion in drinks?

24. February 2022
EOS lip balm no 3D trademark – appeal before ECJ not admissible

EOS lip balm no 3D trademark – appeal before ECJ not admissible

21. February 2022
CFI: Pumpkin seed oil + PGI symbol

CFI: Pumpkin seed oil + PGI symbol

15. February 2022
SPOTIFY v POTIFY – a ‘pot’ app

SPOTIFY v POTIFY – a ‘pot’ app

10. February 2022
CFI: Shoes MADE IN ITALY

CFI: Shoes MADE IN ITALY

Contact us or request a call back

+49 (0) 69 / 606 278 – 0
[email protected]
Request a call back

Footer

Contact

Torhaus Westhafen
Speicherstrasse 59
D – 60327 Frankfurt am Main
Deutschland
+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Office Hours
Moday – Friday:   08:00-18:00

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • LinkedIn
  • xing
  • Email

Newsletter Signup

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]