Are mobile phones really little computers?

The following is an article by Thomas Coop on the EUIPO's decision in LG Electronics Inc v EUIPO concerning an application for K7 as an EU trade mark.

• Miolsz Staszewski opposed the registration of LG’s mark K7 in Class 9 based on the earlier mark K7 in Classes 9, 41 and 42
• The EUIPO upheld the opposition, finding that "computers" and "smart phones", "mobile phones" and "wearable smart phones" are similar
• The General Court agreed, holding, among other things, that it is well known that "mobile phones" are small portable computers

In LG Electronics Inc v European Union Intellectual Property Office (EUIPO) (Case T-21/20), the General Court has dismissed LG Electronics Inc's appeal in a case involving its EU trademark (EUTM) application for K7. In doing so, the General Court agreed with the Board of Appeal of the EUIPO that "smart phones", "mobile phones" and "wearable smart phones" are similar to "computers".

Background

On 5 October 2015 LG filed a EUTM application for K7. The application was opposed by Miolsz Staszewski under Article 8(1)(b) of Regulation 207/2009 based on its earlier EUTM for K7 (No 013256375) in Classes 9 (including "computers"), 41 and 42.

During the opposition proceedings, LG amended the specification of its application for K7 to "smart phones; mobile phones; wearable smart phones" in Class 9. Despite the amendment, the Opposition Division and the Board of Appeal of the EUIPO found a likelihood of confusion, given the identity of the marks and finding that "computers" and "smart phones", "mobile phones" and "wearable smart phones" are similar.

LG filed an appeal on the conclusion of the finding of a likelihood of confusion - more specifically, the finding of similarity of the goods.

LG submitted that, following the amendment of the specification to "smart phones; mobile phones; wearable smart phones", the goods covered by its K7 application were dissimilar to the opponent's goods because they had different purposes - namely, phoning contrasting with computing.

General Court decision

"Computers" versus "smart phones" and "wearable smart phones"

The General Court decided that:

• these goods are similar in relation to their nature and intended purpose owing to technological developments;
• they are all electronic devices functioning through an operating system, which run applications and are accessible via a keyboard;
• they can also all be used to access online services, communicate with or without internet connection and access multimedia content;
• they are in competition with each other, as all these products can be used for the same needs;
• consumers may purchase "smart phones" or "wearable smart phones" as a computer substitute given the functionality overlap; and
• producers of "smart phones" and "wearable smart phones" may have the same producers, users and distribution channels as "computers".

This seems a reasonable conclusion given the current key market operators such as Google and Apple.

"Computers" versus "mobile phones"

The General Court then considered the term "mobile phones" separately. The court stated that its reasoning for "smart phones" and "wearable smart phones" was equally applicable to mobile phones owing to technological developments; it is well known that "mobile phones" are small portable computers.

Finally, the General Court dismissed the argument of dissimilarity owing to the need to have a cell plan or data plan for mobile phones. Firstly, it stated that mobile phones can access the Internet without a data plan through Wi-Fi. Secondly, owing to technological developments, there are now some complimentary aspects between telecommunication services, computers and software. It appears that the General Court was referring to subscriptions software which allows for traditional phone calls to be completed through software, such as Skype for Business.

Consequently, the General Court dismissed LG's appeal and agreed with the board that the goods were similar and that there was a likelihood of confusion.

Comment

The decision highlights that the EUIPO is aware of technological developments and reflects this in its decisions. Twenty years ago, this would have been a borderline decision but, owing to technological developments, the decision appears reasonable - when consumers buy smart phones, they are most likely drawn to their computing capability and camera, rather than their calling functionality. Further, given that, with the coronavirus pandemic, the use of computers as a means of calling people is becoming increasingly prominent, the gap is arguably being further reduced.

This article first appeared on WTR Daily, part of World Trademark Review, in December 2020. For further information, please go to www.worldtrademarkreview.com.