OPPOSITION No B 2 644 238

O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom  (professional representative)

a g a i n s t

Innovzen, Château de Madières, 30120 Rogues, France, (holder).

On 19/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 644 238 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods and services of International trade mark application designating the European Union No 1 256 538, namely:

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture material; stockings for varicose veins; feeding bottles; feeding bottle teats; clothing especially for operating rooms; massage apparatus; prostheses; artificial implants; armchairs for medical or dental use; surgical drapes; bed pans or pans for medical use; special furniture for medical use, surgical instruments, orthopedic footwear; walkers for disabled persons.

Class 41: Education; training; entertainment; sporting and cultural activities; information relating to entertainment or education; vocational retraining; provision of recreational facilities; publication of books; lending libraries; production and rental of motion pictures; rental of sound recordings; rental of television sets; rental of show scenery; videotape editing; photography services; organization of competitions (education or entertainment); organization and conducting of colloquiums, conferences or congresses; organization of exhibitions for cultural or educational purposes; booking of seats for shows; game services provided on-line from a computer network; gambling service; publication of electronic books and journals on-line; electronic desktop publishing.

Class 42: Evaluations and assessments in the fields of science and technology provided by engineers; scientific and technical research; design and development of computers and software; research and development of new products for others; technical project studies; architecture; design of interior decor; development (design), installation, maintenance, updating or rental of software; computer programming; computer system analysis; design of computer systems; consultancy in the design and development of computers; digitization of documents; software as a service (SaaS); cloud computing; information technology (IT) consultancy; hosting of servers; vehicle roadworthiness testing; graphic arts design services; styling (industrial design); authentication of works of art; energy-related audits; electronic data storage.

The opposition is based on the following earlier marks and grounds:

Marks invoked under Article 8(1)(b) EUTMR

• European Union Trade Mark (EUTM) 9 279 456 for the word mark O2,  registered for goods and services in  Classes 1, 2 , 4, 6, 7, 8, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 39, 42, 43, 44 and 45.
• EUTM No 9 236 092  for the figurative mark , registered for goods and services in Classes 1, 2, 5, 7, 10, 11, 12, 13, 15, 17, 19, 20, 22, 23, 26, 27, 31 and 40.

• EUTM No 9 352 378 for the figurative mark , registered for goods and services in Classes 1, 2, 5, 7, 10, 11, 12, 13, 15, 17, 19, 20, 22, 23, 26, 27, 31, 37 and 40.

Marks invoked under Article 8(1)(b) and Article 8(5) EUTMR for which reputation was claimed in Germany, Czech Republic, European Union, United Kingdom, Ireland, Slovakia for goods and services in Classes 9, 38 and 41.

• EUTM No 13 108 139 for the figurative mark , registered for goods and services in Classes 9, 35, 36, 38, 41 and 42.
• EUTM No 4 949 376  for the figurative mark, registered for goods and services in Classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44, 45.

• UK trade mark No 2 560 871 for the word mark O2  and No 2 560 870 for the figurative mark  registered for goods and services in  Classes 9, 38, 41, 42

 

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 EUTM No 13 108 139 and No 9 279 456.

1. The signs

EUTM No 13 108 139 O2 EUTM No 9 279 456
Earlier trade marks	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 earlier marks, used for the purpose of comparison, refer to the concept of a chemical formula, namely, oxygen in its stable form. This formula is commonly known

throughout the world and, as such, the relevant public will be aware of this concept.

Neither of the earlier marks used for the purposes of comparison covers any medical apparatus or services of any kind but they do include laboratory services, for example in Class 42, as well as measuring apparatus in Class 9 which includes devices that measure gases such as oxygen. For such goods and services, the distinctiveness of this element would be weak whilst for the majority of the remaining goods and services, that have no bearing on oxygen related goods and services, the element is perfectly distinctive.

For the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from this perspective as this is the most advantageous scenario for the opponent, namely that the above earlier trade marks are distinctive for all the relevant goods and services.

The Opposition Division finds it relevant to firstly refer to the opponent’s line of reasoning, as it states that the marks are ‘similar’ as the contested mark is made up of the ‘O2’ element because it perceives as the letter ‘O’. The Opposition Division does not concur. Despite being circular, the device is unfinished and does not form a perfect circle. Further, the device is made up of four circular lines of dots of different sizes and depicted in colours (grey, shades of blue and green) which at the top are broken, with the dots dispersing in different directions. The way in which the device is configured cannot be said to be reminiscent of the letter ‘O’ as it will be seen as a fanciful, incomplete, circular, figurative device depicted in a vivid manner. The mere fact that ‘2’ follows this element does not lead to the automatic conclusion that the public will perceive this, together with the figurative device, as referring to ‘O2’.

The opponent has not adduced any evidence or argumentation on why the public would perceive ‘O2’ in the sign, aside from the above, as well as the claim that the device and the numeral are the most distinctive and dominant elements, claims that are not shared by the Opposition Division as will be expounded below. As will become clear, ‘2’ in the contested sign is a weak/secondary element and whilst it is indeed present in the earlier mark it performs a different function. On this point, it is relevant to note that despite the inclusion of ’2’ in the earlier marks, it is not perceived as referring to quantity, as it is not, strictly speaking, a separate, independent part of the sign, as together with ‘O’ it is seen as the aforementioned chemical formula. This difference plays an important role in distinguishing the signs and also influences the overall perception of the signs.

If the opponent’s contentions that the contested sign will be read as ‘O2’ are also due to the fact that ‘air’ is included in the sign the Opposition Division also finds this link too tenuous. ‘Air’ refers to ‘the gaseous substance’ all around us; though it may contain oxygen, it also contains other substances such as nitrogen. For consumers to link this word to the figurative device and numeral and thus perceive a reference to ‘O2’ is too far fetched and does not comport to the normal manner in which consumers perceive signs since they see them as a whole and do not examine individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). It is also relevant to note that consumers do not examine marks side by side, thus the perception of the contested mark cannot be influenced by ‘O2’ from the earlier mark

With respect to dominance, contrary to the opponent’s claims, the Opposition Division, finds that the element ‘2’ is not dominant in any way, since the figurative device and also ‘CHAIR’ are featured in visually eye-catching colours that make them stand out significantly from the remaining elements.  

In the contested sign, the number ‘2’ refers to a quantity and as such will be seen as a reference to a model, the number of goods or that they are intended for two, such as a chair for two, thus rendering it weak to this extent. Even if it is not weak for all the services, such as hosting of servers in Class 42, its impact is still reduced due to its secondary positioning in the sign being positioned in between two visually outstanding elements. Also to consider is that consumers will more readily refer to verbal constituents rather than a number with weak connotations or perceived as secondary, such as in the present case.

English speakers will understand ‘CHAIR’ as being a piece of furniture and as such it will be less distinctive for the armchairs for medical or dental use; special furniture for medical use (in Class 10). However, for the remaining goods and services and for those who do not speak English, this element has an average distinctive character. Therefore, the opponent’s claim that the term is non-distinctive does not hold true for all goods and services and consumers.

Along the same lines, ‘MORE AIR, LESS STRESS’ will only be understood by those with a high command of English. In this scenario it will be taken as a slogan referring to goods in Class 10 that may be used to administer oxygen as is the case with the surgical, medical, dental and veterinary apparatus and instruments and possibly other goods in Class 10. In this scenario, therefore, this slogan is weak while elsewhere its distinctiveness is intact, unlike in the opponent’s assertions that the slogan lacks distinctiveness for all the goods and services.

Visually, in view of the foregoing, the only commonality between the signs is due to ‘2’, a weak element in the contested sign for all the goods at least, as well as being secondary in the overall get up. Amidst the other elements, referred to above, its impact is greatly reduced as the general arrangement displays significant differences that lead to a distinct visual impression. Indeed the vivid colours used in the figurative device and the turquoise ‘CHAIR’ contribute to distancing the signs from a visual stance. Even if some of the elements are weaker, this is only for some of the goods and services and, aside from ‘2’, confined to those who speak English. Consideration also has to be given to the fact that the earlier signs are clearly perceived as composed of just one element referring to a formula and this also comes into play in distinguishing the signs visually.  

In view of the foregoing, the arrangement of the contested sign leads to an overall different visual impression rendering the signs visually dissimilar.

Aurally, bearing in mind the different pronunciation rules in different parts of the relevant territory, the earlier sign will be referred to as ‘O-TWO’ in English for example, ‘O-Dos in Spanish, ‘O’-Zwei’ in German and so on. The contested sign will be referred to as ‘TWO-CHAIR-MORE-AIR- LESS- STRESS’ in English.

In other languages such as Spanish, the sound may be longer as words such as ‘MORE’ will be uttered in two syllables (MO-RE) for example. In this scenario, the overall rhythm and intonation differs significantly from that of the earlier right and identity in just one syllable (TWO) is largely overshadowed by the remaining syllables. Also to consider is the reduced impact of ‘2’ in the contested sign for reasons already outlined above which may also lead to its omission on an aural level.  Whether or not uttered, considering the sounds of the signs as a whole and the weak/secondary character of ‘2’ in the contested sign, they are aurally dissimilar.

Conceptually, as remarked above, the earlier marks have a clear concept, namely that of a chemical formula, not found in the contested sign. Whether or not the contested sign is fully understood by all is irrelevant since at least ‘2’ will be given a concept (quantity) thus rendering the signs dissimilar.

As seen above and as extensively reasoned, the signs have been found visually, aurally and conceptually dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected. Therefore it is not necessary to analyse the goods and services.

Likewise, the question of an enhanced distinctive character does not come into play since the finding of dissimilarity would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the high distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The Opposition Division has concentrated on the scenario that is most favourable to the opponent, namely that the inherent distinctive character of ‘O2’ is average. Consequently, this absence of a likelihood of confusion equally applies where ‘O2’ may be seen as of a lower distinctive character.

Finally, since the remaining earlier marks solely consist of the same element as the signs used for the purposes of comparison, and as set out at the beginning of this decision, there would be no likelihood of confusion for them either as they would also lead to a finding of dissimilar signs.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the holder establishes due cause for the use of the contested trade mark.

As no observations were received from the holder during the proceedings this is not a relevant issue.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As the signs are dissimilar, one of the aforementioned requisites is not satisfied and the opposition cannot prosper. Therefore it is rejected.

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the holder did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Lucinda CARNEY

Vanessa PAGE

Vita VORONECKAITE

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.