OPPOSITION No B 2 754 888

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

Kalipark, 520 West Commercial Avenue, Commercial 2, Miami Beach Florida 33139, United States of America (applicant), represented by Cabinet Erick Landon, 154, Boulevard Malesherbes, 75017 Paris, France (professional representative)  

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 754 888 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 108 591 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 108 591 for the word mark ‘GENII’. The opposition is based on, inter alia, European Union trade mark registration No 10 113 009 for the word mark ‘GENIE’. 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 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 10 113 009.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; data processing equipment ; fire-extinguishing apparatus; apparatus for the transmission of sound and image; telecommunications apparatus; mobile telecommunication apparatus; mobile telecommunications handsets; PDAs (Personal Digital Assistants), mobile telephones, telecommunications network apparatus; drivers software for telecommunications networks and for telecommunications apparatus; protective clothing; protective helmets; SD-Cards; glasses, spectacle glasses, sunglasses, protective glasses and cases therefor; contact lenses; cameras; camera lenses; MP3 players; audio tapes, audio cassettes, audio discs; audio-video tapes, audio-video cassettes, audio-video discs; video tapes, video cassettes, video discs; CDs, DVDs; electronic publications (downloadable); mouse mats; magnets; mobile telephone covers, mobile telephone cases; magnetic cards, encoded cards; parts and fittings for all the aforesaid goods.

Class 38: Telecommunications; telecommunications services; mobile telecommunications services; telecommunications portal services; Internet portal services; mobile telecommunications network services; fixed line telecommunication services; provision of broadband telecommunications access; broadband services; broadcasting services; television broadcasting services; broadcasting services relating to Internet protocol TV; provision of access to Internet protocol TV; Internet access services; email and text messaging services; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; communications services for accessing a database, leasing of access time to a computer database, providing access to computer databases, rental of access time to a computer database; operation of a network, being telecommunication services; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; IT services; computer programming services; services of a programmer; recovery of computer data; consultancy in the field of computer hardware; computer programming; duplication of computer programs; installation of computer software; maintenance of computer software; updating of computer software; computer system design; computer systems analysis; conversion of data or documents from physical to electronic media; creating and maintaining websites for others; data conversion of computer programs and data (not physical conversion); hosting computer sites (web sites); services of engineers; expert advice and expert opinion relating to technology; rental of data processing apparatus and computers; technical services relating to projection and planning of equipment for telecommunications; services of information brokers and providers, namely product research for others; weather forecasting; research in the field of telecommunication technology; monitoring of network systems in the field of telecommunications; technical support services relating to telecommunications and apparatus information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

The contested goods and services are the following:

Class 9: Downloadable computer software for engaging and coordinating temporary and permanent employment positions by connecting employers with workers via a mobile application and for dispatching job and employment agents to prospective employers in their vicinity; providing downloadable mobile software applications for use in reviewing, applying, uploading, editing and booking temporary and permanent employment positions and for connecting employers with workers for such positions and for dispatching job and employment agents to prospective employers in their vicinity; providing downloadable mobile software applications for use in updating, reporting and determining current the performance level and status of job and employment tasks in progress.

Class 38: Telecommunications services, namely, routing calls, emails, sms messages, and push-notifications to local job and employment agents in the vicinity of a prospective employer using mobile phones; telecommunications services, namely, routing calls, emails, sms messages, and push-notifications to local employers in the vicinity of job and employment agents using mobile phones.

Class 42: Providing temporary use of online non-downloadable software for providing temporary and permanent employment positions, booking reservations for such temporary and permanent employment positions and for dispatching job and employment agents to prospective employers in their vicinity; providing temporary use of online non-downloadable software for engaging and coordinating temporary and permanent employment positions by connecting employers with workers via a mobile application and for dispatching job and employment agents to prospective employers in their vicinity; providing temporary use of online non-downloadable software for use in reviewing, applying, uploading and editing temporary and permanent employment positions and for connecting employers with workers for such positions and for dispatching job and employment agents to prospective employers in their vicinity; providing temporary use of online non-downloadable software for use in updating, reporting and determining current the performance level and status of job and employment tasks in progress.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and the opponent’s lists of goods and services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested downloadable computer software for engaging and coordinating temporary and permanent employment positions by connecting employers with workers via a mobile application and for dispatching job and employment agents to prospective employers in their vicinity; providing downloadable mobile software applications for use in reviewing, applying, uploading, editing and booking temporary and permanent employment positions and for connecting employers with workers for such positions and for dispatching job and employment agents to prospective employers in their vicinity and providing downloadable mobile software applications for use in updating, reporting and determining current the performance level and status of job and employment tasks in progress consist of downloadable computer and mobile software and are similar to the opponent’s data processing equipment. These goods can share the same distribution channels, target the same relevant public and be produced by the same undertakings. Furthermore, they are complementary.

Contested services in Class 38

The contested telecommunications services, namely, routing calls, emails, sms messages, and push-notifications to local job and employment agents in the vicinity of a prospective employer using mobile phones and telecommunications services, namely, routing calls, emails, sms messages, and push-notifications to local employers in the vicinity of job and employment agents using mobile phones consist of specific telecommunications services. As a result, all the contested services are included in the opponent’s broad category of telecommunications services. Therefore, they are identical.

Contested services in Class 42

The contested providing temporary use of online non-downloadable software for providing temporary and permanent employment positions, booking reservations for such temporary and permanent employment positions and for dispatching job and employment agents to prospective employers in their vicinity; providing temporary use of online non-downloadable software for engaging and coordinating temporary and permanent employment positions by connecting employers with workers via a mobile application and for dispatching job and employment agents to prospective employers in their vicinity; providing temporary use of online non-downloadable software for use in reviewing, applying, uploading and editing temporary and permanent employment positions and for connecting employers with workers for such positions and for dispatching job and employment agents to prospective employers in their vicinity and providing temporary use of online non-downloadable software for use in updating, reporting and determining current the performance level and status of job and employment tasks in progress are included in the opponent’s broad category of IT services. 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, while the opponent´s goods and services are directed at the general public and at professionals, the specific goods and services covered by the contested sign are directed at a professional public only. Therefore, the relevant public for assessing the likelihood of confusion will be the professional public only.

The degree of attention may vary from average to higher than average depending on the price and sophistication of the specific software, telecommunications services and non-downloadable software related services offered.

3. The signs

GENIE	GENII
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 earlier mark is the word mark ‘GENIE’ which is an English word meaning ‘a servant who appears by magic and fulfils a person's wishes’ and the contested sign is the word mark ‘GENII’ which is the plural form of ‘GENIE’ in English.

Neither ‘GENIE’ nor ‘GENII’ has any particular meaning in relation to the goods and services concerned for the English-speaking public and are, therefore, distinctive.

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Consequently, the Opposition Division finds it appropriate to first focus the comparison of the signs on the English-speaking part of the public in the relevant territory.

Visually, the signs coincide in their first four letters ‘GENI’ and are only differentiated by their respective fifth letter, ‘E’ in the earlier mark as opposed to another ‘I’ in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the earlier mark will be pronounced as ‘dʒiːni’ by the relevant public under analysis and the contested sign will be pronounced as ‘dʒiːnɪˌaɪ’ (see information extracted from Collins English Dictionary on 14/08/2017 at https://www.collinsdictionary.com/dictionary/english/genii).

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with an almost identical meaning, the signs are conceptually highly similar.

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.

The opponent claimed that its mark is highly distinctive but did not submit any evidence of enhanced distinctiveness 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 has no meaning for any of the goods and services in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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).

Account should also 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.

In the present case, the goods and services are identical or similar and the level of attention of the relevant public may vary from average to higher than average.

The earlier mark has a normal degree of distinctiveness and the signs are visually, aurally and conceptually highly similar since they only differ in their respective last letter and the contested sign ‘GENII’ is the plural form of the earlier mark ‘GENIE’.    

In view of all the above and taking into account the principles of interdependence and imperfect recollection as outlined above, the Opposition Division considers that there is a likelihood of confusion on the part of the public under analysis in the relevant territory within the meaning of Article 8(1)(b) EUTMR, in particular as the relevant consumers, even those who may display a higher level of attention and even if they did recall that the contested sign is in the plural form of ‘GENIE’ whereas the earlier mark is in the singular form of the same word, will still believe that the goods and services offered under the different signs originated from the same or economically linked undertakings.

Consequently, there is a likelihood of confusion on the part of the English-speaking public in the relevant territory. 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 opponent’s European Union trade mark registration No 10 113 009. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

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

Steve HAUSER

Sam GYLLING

Benoît VLEMINCQ

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.