OPPOSITION No B 2 073 776

QSC AG, Mathias-Brüggen-Str. 55, 50829 Köln, Germany (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Broadnet Teleservices, LLC, 1745 Shea Center Drive, Suite 320, Highlands Ranch, Colorado 80129, United States of America (applicant), represented by EIP, Fairfax House, 15 Fulwood Place, London WC1V 6HU, United Kingdom (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 073 776 is upheld for all the contested services.

2.        European Union trade mark application No 10 718 302 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 10 718 302 for the word mark ‘BROADNET’. The opposition is based on German trade mark registration No 30 456 118 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of earlier German trade mark registration No 30 456 118 on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 07/06/2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 07/06/2007 to 06/06/2012 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9:        Data processing equipment and computers.

Class 35:        Advertising, Internet advertising.

Class 38:        Telecommunications.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 29/04/2015, in accordance with Rule 22(2) EUTMIR, the Office gave the opponent until 29/06/2015 to submit evidence of use of the earlier trade mark. Following a request from the opponent, this period was extended until 29/08/2015.

Taking into account the fact that the time limit expired on a day on which the Office was not open for receipt of documents and ordinary mail was not delivered, the time limit was extended until the first day on which the Office was open for receipt of documents and on which ordinary mail was delivered, namely 31/08/2015 (Rule 72 (1) EUTMIR).

On 31/08/2015, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Exhibit 1: screenshots of the opponent’s website, in German, showing the sign  in the upper right corner of each page. The pages have been extracted using the digital internet archive Wayback Machine and refer to dates between 06/01/2005 and 30/09/2007 (the latest two are dated within the relevant period). The opponent submitted partial translations into English of pages 1 and 9 (dated 06/01/2005 and 30/09/2007). It is clear from the extracts that the opponent offers telecommunication services, including IP telephone connections, DSL connections and VoIP solutions.

• Exhibit 2: 21 invoices dated between 03/01/2007 and 04/10/2007 (13 dated before the relevant period and 8 dated within the relevant period), issued by Broadnet AG with an address in Germany to one client, the name of which is redacted; the client code and the city (Bayreuth, Germany) are visible. The sign  is present at the top right of each invoice. The invoices refer to various telecommunication services, described as ‘dataVoice Line SDSL 2 Mbit/s flat’, ‘dataBackup ADSL’, ‘dataHighways® VPN 2 Mbit/s 24 Monate’, ‘dataVoice Line SDSL 2 Mbit/s flat’, ‘Broadnet P 410 economy arctic – monthly provision’, etc., and to one-month periods for the services provided.

• Exhibit 3: a promotional brochure in German, dated 2007, containing the sign . The opponent’s translation into English clarifies that this document refers to new telecommunication services from Broadnet, marketed as ‘dataAirways’.

• Exhibit 4: a price list produced by the opponent, dated 05/03/2007, with the sign  at the top of the document and showing telephones, adapters and accessories with various indications such as ‘Broadnet P 410 economy’, ‘Broadnet P 410 economy plus’, ‘Broadnet P 410 advance’ and ‘Broadnet key module’; the prices are given in euros.

• Exhibit 5: a brochure produced by the opponent, QSC AG, in German, presenting a non-binding offer to Zech Group GmbH, dated 30/07/2008, with a partial translation into English, clarifying that the opponent provides ‘broadmedia VoIP’ services, high-speed connections to the internet, and hosting or running of performing VPNs via a private MPLS infrastructure. The offer lists the indications ‘Broadnet P410 standard mangan’ and ‘Alternative – Broadnet P420 advance mangan’ among the services to be provided.

• Exhibit 6: extracts from an undated brochure in German, showing the sign  and containing interviews with representatives of the opponent’s clients. The opponent submitted a partial translation of the document, which shows that the company Capgemini has been working with the opponent since 2005 and uses its VPN connection services. One of the pages, in German, of the brochure refers to 30/06/2007 as the closing date for a competition, from which it can be inferred that the brochure was issued before that date.

• Exhibit 7: 35 invoices dated between 05/11/2007 and 08/12/2009 (within the relevant period), issued by QSC AG (the opponent) with an address in Germany to one client, the name of which is redacted; the client code (coinciding with the one used in the invoices in Exhibit 2) and the city (Bayreuth, Germany) are visible. The invoices refer to telecommunication services, described as, for example, ‘dataHosting basic’, ‘dataHighways® VPN’ and ‘dataVoIP Grundvertrag’. The word ‘Broadnet’ is used in most of the invoices, which contain references to, inter alia, monthly provision of ‘Broadnet P 410 economy arctic’, ‘Broadnet P 420 advance arctic’, ‘Broadnet P key module’ and ‘Netzteil für Broadnet Phones’ and show monthly costs for one-month periods between 01/12/2007 and 01/12/2009 in relation to these services. The opponent’s contact details in the invoices contain the website address www.broadnet.de.

• Exhibit 8: a Wikipedia article about ‘call termination services’, explaining that call termination refers to the routing of telephone calls from one telephone company, also known as a carrier or provider, to another.

• Exhibit 9: an extract from an agreement on reciprocity services, in German, between Broadnet Services GmbH and Deutsche Telekom AG, as well as a letter in German accompanying the agreement, dated 06/04/2009. The opponent submitted a partial translation, referring to Part 3 of the agreement, ‘Prices for the services provided by Broadnet’, and concerning services valid from 01/12/2008 until 30/06/2011 designated as ‘Broadnet’ followed by an additional indication (e.g. ‘Service Broadnet-B.1’, ‘Service Broadnet-O.6-I’, ‘Service Broadnet-O.12’). For example, the service ‘Broadnet-B.1’ relates to ‘connections to the national telephone network by Broadnet out of the telephone network of Deutsche Telekom’.

• Exhibits 10-11: two amendment agreements in German amending later versions of a reciprocity agreement dated 23/10/2003 between Broadnet Services GmbH and Deutsche Telekom AG. The amendment agreements were signed in March 2012 and April 2012. The opponent submitted partial translations of the agreements, which specify that various of the opponent’s telecommunication services, designated by, for example, ‘Broadnet-O.5’ or ‘Broadnet-O.12’, have been added to the contract. It can be seen that, for example, the services ‘Broadnet-O.5’ relate to ‘connections to the freephone service in the telephone and mobile network of Telekom and to the freephone service of other network operators under the service code 0800’.

• Exhibit 12: an invoice, in German and dated 04/10/2009, issued by QSC AG (the opponent) to a client with an address in Frankfurt am Main, Germany, for call termination services for the period 01/09/2009-30/09/2009 (worded as ‘connections via the national telephone network to the national fixed network of Broadnet’) designated as B.1-Broadnet.

• Exhibit 13: a letter, in German with a partial translation into English, dated 20/11/2012, from Broadnet Services AG to the German Federal Network Agency, the regulatory office for the electricity, gas, telecommunications, post and railway markets. The letter explains that Broadnet Services AG ran telephone exchanges in Berlin, Düsseldorf, Hamburg, Frankfurt, Munich and Stuttgart and that it had terminated a total of 398 242 091 minutes vis-à-vis Deutsche Telekom as well as 146 146 890 minutes vis-à-vis other customers.

Preliminary remarks

The applicant argued that the opponent did not submit translations of some of the evidence of use and that the nature of the goods or services referred to in the evidence was not clear. The opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Following an explicit request by the Office, on 29/11/2016, within the time limit set for translating the evidence, the opponent submitted partial translations of the documents.

The applicant argues that the opponent did not submit full translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings and the fact that the partial translations of these documents provide sufficient information to enable their content to be understood, the Opposition Division considers that these documents are relevant and can be taken into account.

It should be noted that it is not necessary for all the evidence of use filed by the opponent to originate from the opponent itself. According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted some evidence of use of its marks by third parties or by its predecessors implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225). To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The evidence must show that the earlier German trade mark has been genuinely used in Germany.

The majority of the documents submitted, including the agreements, invoices, brochures and website extracts, are in German. The agreements submitted as Exhibits 9-11 concern German entities and refer to connections to the German national telephone network, and the addresses of the clients in the invoices submitted as Exhibits 2, 7 and 12 are also in Germany.

Consequently, the evidence submitted suffices to establish that the sign was present in the market in the relevant territory.

Time of use

The evidence must show genuine use of the German trade mark within the relevant period, namely from 07/06/2007 to 06/06/2012, inclusive.

In the present case, a substantial number of the documents (some of the invoices submitted as Exhibit 2 and all the invoices submitted as Exhibits 7 and 12, the agreements submitted as Exhibits 9-11, and some of the extracts from the opponent’s website submitted as Exhibit 1) are dated within the relevant period or contain information referring to the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, some of the evidence referring to use outside the relevant period, in particular some of the invoices in Exhibit 2 and some of the brochures and website extracts dated before or after this period or undated, presents additional supporting information of use of the opponent’s mark within the relevant period, because the use it refers to is close in time to that period and provides evidence of continuity of use over time.

Therefore, the evidence of use filed by the opponent contains sufficient indications concerning the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The evidence submitted by the opponent in order to prove genuine use of the earlier mark relates exclusively to Germany. Although the applicant argues that most of the invoices submitted refer to a single client, located in one city in Germany, this fact in itself cannot prevent a finding that the use of the mark is genuine. First, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not. Moreover, genuine use is not excluded only because the use has been made in dealings with the same customer, as long as the trade mark is used publicly and outwardly and not solely within the undertaking which owns the earlier trade mark or within a distribution network owned or controlled by that undertaking (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 50; 8/10/2014, T-300/12, Fairglobe, EU:T:2014:864, § 36). In the present case, the evidence shows clearly that the commercial transactions made by the opponent or by third parties involved public use.

The materials submitted, in particular the majority of the invoices and the service agreements (supported by some of the brochures and website printouts dated at the beginning of the relevant period or very close to it), relate to periods within the relevant period and prove the duration and frequency of use of the mark during that period. Moreover, use does not have to be continuous during the relevant period of five years. It is sufficient if use has been made of the mark at the very beginning or end of the period, provided that this use was genuine (16/12/2008, T-86/07, Deitech, EU:T:2008:577).

From the documents submitted, it is clear that the opponent has been providing some rather specialised communication services to other telecommunication providers, such as the call termination services provided during several years within the relevant period, referred to in the agreements between Broadnet Services GmbH and Deutsche Telekom AG and in the sample invoice submitted as Exhibit 12. Moreover, the invoices submitted as Exhibits 2 and 7 refer to various telecommunication services, and the eight invoices in Exhibit 2, dated at the beginning of the relevant period, bear the indication .

The amounts shown in the invoices will not be mentioned due to a confidentiality request. However, considering the nature of the services at issue and the fact that they are rather specialised services, the documents demonstrate sales amounting to a substantial value and provide sufficient information concerning the commercial volume of use.

It is clear from the evidence that the opponent provided services under the indications ‘Broadnet’ or  in the relevant market. This gives the Opposition Division sufficient information regarding the opponent’s commercial activities in the relevant period and enables it to conclude that use of the trade mark at issue took place to a sufficient extent.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

Firstly, it should be noted that, although in some of the evidence submitted the company providing the services is referred to as ‘Broadnet’, the material also clearly makes reference to various telecommunication services using the indication ‘Broadnet’ (e.g. ‘Broadnet-B.1’, ‘Broadnet-O.5’, ‘Broadnet-O.12’).

Moreover, in the case of services, it is impossible to use the trade marks ‘on’ services, as they are intangible. Therefore, the use of ‘Broadnet’ in the service agreements and invoices and of  in the brochures and in the form of a logo at the top or bottom of invoices and web pages providing information about the services in question is considered sufficient to prove use of these signs as a trade mark.

Secondly, it is appropriate to consider if the mark as used contains differences from its registered form that would affect its distinctive character or if, in spite of some differences, the mark as used and its registered form are essentially the same.

In the present case, earlier German trade mark registration No 30 456 118 is the figurative mark . The evidence submitted demonstrates use of the sign as registered () in the printouts from the opponent’s website and in some brochures and invoices. The evidence also shows use of the element ‘Broadnet’ as a verbal element in textual references to various services in the contract agreements and the invoices. Therefore, the use of the earlier mark as a verbal element in some of the documents does not materially affect the distinctiveness of the earlier figurative mark, as the figurative component of the mark as registered is mostly decorative.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1)(a) EUTMR.

Rule 22(3) EUTMIR requires that the opponent proves genuine use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

The earlier mark is registered for the following goods and services:

Class 9:        Data processing equipment and computers.

Class 35:        Advertising, Internet advertising.

Class 38:        Telecommunications.

However, the evidence filed by the opponent does not show genuine use for all the goods and services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case although some telephones and adapters appear in the opponent’s price list for 2007, there are no documents demonstrating sales of goods. Indeed, even though indications of some of these goods (e.g. ‘Broadnet P 410 economy arctic’, ‘Broadnet P 420 advance arctic’ and ‘Broadnet P key module’) appear in some invoices, they are accompanied by mentions of one-month periods and fees for these periods, which clearly shows that the products referred to are telecommunication service packages or rental of telecommunication equipment, and not goods. Moreover, the agreements submitted as Exhibits 9-11 also refer to various telecommunication services marketed as ‘Broadnet’, such as connection services between telephone networks. All these telecommunication services belong to Class 38.

Consequently, the evidence proves use for various telecommunication services, such as call termination services, belonging to telecommunications in Class 38 in the specification of goods and services of the earlier mark. As the opponent is not required to prove all the conceivable variations of the category of services for which the earlier mark is registered and as the services for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for telecommunications in Class 38.

Overall assessment and conclusion

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory in relation to telecommunications in Class 38.

As seen above, the Opposition Division considers that there are sufficient indications concerning the place, time, extent and nature of use to deem the use of the mark proven for these services.

The evidence submitted does not relate to the remaining goods and services.

It is noted that on 03/06/2016, after the expiry of the time limit, the opponent submitted additional evidence.

Even though, according to Rule 22(2) EUTMIR the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 76(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 30). In the present case the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional evidence submitted on 03/06/2016 can remain open. This is because the additional evidence does not demonstrate use of any goods or services other than telecommunications, for which genuine use has been accepted on the basis of the evidence submitted within the time limit.

Indeed, the evidence of use submitted on 03/06/2016 consists of two invoices, in German, dated 04/01/2011 and 04/01/2012, issued by QSC AG (the opponent) to a client in Eschborn, Germany, and a client in Dusseldorf, Germany, for telecommunication services for the periods 01/12/2010-31/12/2010 and 01/12/2011-31/12/2011.

This additional evidence does not demonstrate use for any of the remaining goods and services in Classes 9 and 35 for which use has not been proven. Therefore, taking into account the additional evidence would not alter the conclusion reached on the basis of the initial evidence.

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.

1. The services

The services on which the opposition is based and for which genuine use has been proven are the following:

Class 38: Telecommunications.

The contested services are the following:

Class 38:        Telecommunication services of all types; recording and subsequent transmission of telephonic messages; telephonic messaging, including interactive telephonic messaging; automated telephonic calling; automated telephonic message delivery; automated telephonic data capture and reporting; telephonic conference services.

The contested telecommunication services of all types, albeit worded slightly differently, are identical to the opponent’s telecommunications.

The contested recording and subsequent transmission of telephonic messages; telephonic messaging, including interactive telephonic messaging; automated telephonic calling; automated telephonic message delivery; automated telephonic data capture and reporting; telephonic conference services are included in the broad category of the opponent’s telecommunications. 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 services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise in the telecommunications sector. The degree of attention may vary from average to higher than average depending on the exact nature of the services at issue, their price and the terms and conditions of the purchased services.

3. The signs

	BROADNET
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 a figurative mark, consisting of the word ‘Broadnet’ depicted in rather standard bold title case letters, above which there is a simple abstract figurative element in orange. The mark has no elements that could be considered visually more dominant than other elements.

The contested sign is the word mark ‘BROADNET’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that the element ‘NET’, included at the end of both signs, may be perceived by the relevant consumers with its meaning in English as, inter alia, another word for ‘network’, as the word ‘Netz’ exists in German and ‘the net’ is often used and understood as a reference to the internet in various languages. Consequently, in relation to the relevant telecommunication services this element may be perceived as referring to their nature, namely that they are intended to connect people in a network or that they are provided using the internet. Its distinctiveness is, to that extent, very limited.

It cannot be excluded that the part of the relevant public with some knowledge of English will also understand the first part, ‘BROAD’, of the marks under comparison with its meaning in English, namely as ‘having relatively great breadth or width’, ‘of vast extent; spacious’. The part of the public that will understand this meaning, such as the professional part of the public in the telecommunication sector, may perceive the element ‘BROADNET’ as suggestive of broadband internet. However, since a net/the internet would not be described as ‘broad’, the word ‘BROADNET’ as such has some distinctive character.

For the part of the public that is not familiar with the meaning of the English word ‘BROAD’, included in both signs, this element will not be associated with any meaning and will be perceived as a fanciful term.

The figurative element of the contested sign is an abstract figure that does not convey a particular meaning. It should be noted that when signs consist of both verbal and figurative components, 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). Therefore, taking into account the above, the figurative device in the earlier mark is likely to be attributed less importance by consumers than the verbal element ‘Broadnet’.

Visually, the signs coincide in the verbal element ‘BROADNET’, which forms the only verbal element of the earlier mark and the entire contested mark. They differ in the figurative element and slight stylisation of the earlier mark. As seen above, consumers will more readily focus on the verbal element ‘BROADNET’ of the earlier mark, rather than on its figurative element. Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the verbal element ‘BROADNET’, present in both signs. Therefore, the signs are aurally identical.

Conceptually, the relevant public will perceive the element ‘NET’, included in both signs, with the meaning defined above and will therefore associate the marks with the same meaning on account of that coinciding element. However, bearing in mind that this element is not particularly distinctive for the services at issue, the signs are conceptually similar to only a low degree for the part of the public that understands the meaning only of ‘NET’ in the marks.

Furthermore, as explained above, the beginning of the marks, ‘BROAD’, may also be understood by a part of the public. Nevertheless, the word combination ‘BROADNET’, even if perceived as a meaningful unit, has some distinctiveness as a whole. The figurative element of the earlier mark is an abstract element that does not evoke any concept. Consequently, the marks will be linked on a conceptual level on account of the coinciding element ‘BROADNET’ for the part of the public that understands the meanings of both ‘BROAD’ and ‘NET’.

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 did not explicitly claim that its mark is particularly distinctive 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 as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal for all of the services because, although it contains some weak elements, as a whole, it is composed of a figurative element and an invented word with no straightforward meaning in relation to the services at issue.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The services under comparison are identical. The distinctiveness of the earlier mark is normal. The signs are visually similar to a high degree and aurally identical on account of the verbal element ‘BROADNET’, which they have in common; it forms the only verbal element of the earlier mark and the entire contested mark. Moreover, the marks may also be associated on a conceptual level. The signs differ in the figurative element and stylisation of the earlier mark. However, these additional elements are not sufficient to clearly differentiate the marks for the reasons set out above.

Consequently, it is considered that, as a whole, the marks convey similar overall impressions.

Taking into account 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, the Opposition Division considers that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 456 118. It follows that the contested trade mark must be rejected for all the contested services.

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(1)(a) 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

Adriana VAN ROODEN

Boyana NAYDENOVA

Pedro JURADO MONTEJANO

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.