OPPOSITION No B 2 358 110

 

Blackberry Limited, 2200 University Avenue East, Waterloo, Ontario N2K 0A7, Canada (opponent), represented by Kilburn & Strode Llp, 20 Red Lion Street, London  WC1R 4PJ, United Kingdom (professional representative)

a g a i n s t

Geeksphone Sl, Manuel Silvela 1, 28010 Madrid, Spain (applicant), represented by Luigi Carlini, C/ Lagasca 125, 1º Ext. Izq., 28006 Madrid, Spain (professional representative).

On 24/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 358 110 is upheld for all the contested goods.

2.        European Union trade mark application No 12 483 608 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 483 608. The opposition is based on, inter alia, European Union trade mark registration No 11 882 081. The opponent invoked Article 8(1)(b) and 8(5) 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 882 081.

1. The goods

The goods on which the opposition is based are the following:

Class 9:         Apparatus for recording, transmission, processing or reproduction of data, sound or images; data processing equipment, computers; mobile computing and communication devices, namely, mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, and mobile apparatus for recording, transmission, processing or reproduction of data, sound or images; computer software; computer software for computing and communication devices in the nature of apparatus for recording, transmission, processing or reproduction of data, sound or images, data processing equipment, and computers, and mobile computing and communication devices in the nature of mobile phones, smartphones, personal digital assistants (PDAs), tablet phones, tablet computers, mobile computers, and mobile apparatus for recording, transmission, processing or reproduction of data, sound or images; embedded computer software used as a feature found on the foregoing computing and communication devices and mobile computing and communication devices; embedded computer software for GPS navigation used as a feature found on the foregoing computing and communication devices and mobile computing and communication devices; downloadable software for the foregoing computing and communication devices and mobile computing and communication devices; mobile application software for the foregoing computing and communication devices and mobile computing and communication devices; downloadable entertainment content in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor; downloadable entertainment content in the nature of games, themes, music, and video, in the field of the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor; operating system software for the foregoing computing and communication devices and mobile computing and communication devices; enterprise software for the foregoing computing and communication devices and mobile computing and communication devices; software development kits for the foregoing computing and communication devices and mobile computing and communication devices; GPS navigation software for the foregoing computing and communication devices and mobile computing and communication devices; accessories for the foregoing computing and communication devices and mobile computing and communication devices; accessories in the nature of batteries, chargers, headsets, earphones, devices for hands-free phone use, protective cases, carrying cases that may be worn, speakers, and charging cables, for the foregoing computing and communication devices and mobile computing and communication devices; parts and fittings in the nature of battery doors for the foregoing computing and communication devices and mobile computing and communication devices; parts and fittings for the foregoing computing and communication devices and mobile computing and communication devices; and magnetically encoded prepaid purchase cards and gift cards for the foregoing computing and communication devices and mobile computing and communication devices, and goods/services therefor.

The contested goods are the following:

Class 9:         Apparatus for recording, transmission or reproduction of sound or images; Phones; Mobile phones; Portable telephones; Telephone sets; Computer application software for mobile phones, namely, software for developing and installing applications on mobile phones; Mobile telephone accessories, namely, cases, boxes, covers, docks, holders, screen protectors, earphones, speakers, cables, chargers, memory cards, USB accessories, and car accessories; Smartphones.

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 lists of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 9

Apparatus for recording, transmission or reproduction of sound or images; Mobile phones; Portable telephones; Smartphones are identically contained in both lists of goods.

The contested Phones; Telephone sets, both include, as broader categories, or overlap with the opponent’s mobile communication devices in the nature of mobile phones.  Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are both considered identical to the opponent’s goods.

The contested Computer application software for mobile phones, namely, software for developing and installing applications on mobile phones are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested Mobile telephone accessories, namely, cases, boxes, covers, docks, holders, screen protectors, earphones, speakers, cables, chargers, memory cards, USB accessories, and car accessories are included in, or overlap with the opponent’s accessories for the foregoing computing and communication devices and mobile computing and communication devices. The goods of both marks are various types of accessories.  Therefore, they are identical.

2. 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 and at customers with specific professional knowledge or expertise.

The degree of attention is average.

3. The signs

BLACKBERRY
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements of the marks 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.

As regards the sign, although they are  composed of one verbal elements, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). The same applies for the present case.

In the earlier mark, the mark as a whole is perceived as referring to a berry of a woody plants of the rosaceous genus Rubus. The mark is also divided into elements BLACK (referring to a colour) and BERRY (referring to small fruit growing on a bush or tree) (Collins English Dictionary).

The earlier mark nor any of its elements have no meaning, in regard to the relevant goods,  for the relevant public and are, therefore, distinctive.

The element BLACK of the contested sign will be understood with the meaning explained above. The device element is meaningless.

The element PHONE is understood as referring to a communication device by the relevant public.   Bearing in mind that the relevant goods are phones, other communication devices, relevant software and peripherals, this element is non-distinctive for these goods.

The contested sign has no elements that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components as the contested sign in the present case, then in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Furthermore, the 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 BLACK in the beginning of the marks. However, they differ in their endings, BERRY and PHONE (the latter found non-distinctive). The marks also differ in the device element of the contested mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables BLACK in their beginnings. The pronunciation differs in the remaining elements BERRY and PHONE (the latter found non- distinctive).  The marks have similar length and rhythm.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the element  BLACK, 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.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The goods have been found identical. The similarities and dissimilarities of the marks have been established.

The marks share the same distinctive element BLACK at their beginnings. The remaining figurative/stylisation elements in the contested mark will not particularly catch consumers’ attention, who will focus on the word elements. The element PHONE in the contested sign is non-distinctive. The marks have similar length and the same rhythm aurally. The differences between the signs cannot outweigh the prevailing coincidences.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

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 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).

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 covered are from the same or economically linked undertakings as can be the case here.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element BLACK. In support of its argument the applicant refers to some trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element BLACK. The applicant also refers to some previous cases, which however, due to their significant factual differences to the present case are to be considered not relevant. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the 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 European Union trade mark registration No 11 882 081. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right EUTM No 11 882 081 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Francesca DINU

Erkki MÜNTER

Irina SOTIROVA

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.