OPPOSITION No B 2 626 599

BlackBerry Limited, 2200 University Avenue East, Waterloo, Ontario N2K 0A7 Canada (opponent), represented by Brandstorming, 11, rue Lincoln 75008 Paris, France (professional representative)

a g a i n s t

LG Electronics INC., 128, Yeoui-daero, Yeongdeungpo-gu Seoul  150-721, Republic of Korea (applicant), represented by Cohausz & Florack Patent- Und Rechtsanwälte Partnerschaftsgesellschaft MBB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).

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

DECISION:

1.        Opposition No B 2 626 599 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 500 318, ‘CLASSIC BLACK’. The opposition is based on European Union trade mark registration No 13 142 989, ‘BLACKBERRY CLASSIC’.

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.

1. The goods

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

Class 9: Mobile phones; smartphones.

The contested goods are the following:

Class 9: Computer application software; Computer application software for mobile phones.

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.

The opponent rightly claims that computer application software, computer application software for mobile phones are similar to the opponent’s mobile phones, especially since their complementary relationship is explicitly mentioned in the specification of some of the contested goods. The goods are likely to be developed by the same company and can also coincide in distribution channels.

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 similar are directed at the public at large. The degree of attention is considered average.

3. The signs

BLACKBERRY CLASSIC	Classic Black
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 consists of the word ‘BLACKBERRY’, an English word for an edible berry-like fruit of the bramble, Rubus fruticosus, and its cultivated varieties, and ‘CLASSIC’, meaning (i) of acknowledged excellence or importance  (ii) of the first class, of the highest rank or importance; (iii) archetypal; very typical of its kind, representative (information extracted from Oxford English Dictionary, online edition, on 25/08/2017 at the address www.oed.com). This latter word forms part of basic English and will be recognised as such throughout the relevant territory.

The element ‘BLACKBERRY’ of the earlier mark has no relation to the goods and its distinctiveness is normal.

The non-English speaking part of the public not understanding the word ‘BLACKBERRY’ may nevertheless separately perceive the basic English term ‘BLACK’ in the earlier sign, denoting the darkest primary colour. Consequently, for this part of the public the element ‘BLACK’ of the earlier sign will be devoid of distinctive character for the mobile phones and smartphones it covers. Indeed, the colour black is a standard colour of mobile phones, as it is also demonstrated by evidence filed by the opponent.

The element ‘CLASSIC’ is a laudatory term in both marks which only gives information on the positive qualities, the excellence and importance of the goods at hand. Consequently, this term is devoid of distinctive character.

In the contested sign, ‘BLACK’ will be perceived throughout the relevant territory denoting the darkest primary colour. Together with the laudatory element ‘CLASSIC’, the contested mark may be understood as reference to a basic and unadorned, important, excellent dark colour.

The opponent argues that the contested mark ‘CLASSIC BLACK’ is descriptive and devoid of distinctive character because it simply denotes the colour of the goods at hand. In this respect, the Opposition Division confirms that the examination of the contested trade mark application was thorough and the application was effectively refused for the goods in relation to which the name of a colour may serve to describe characteristic within the meaning of Article 7(1)(c) EUTMR.

However, Article 7(1)(c) EUTMR can only apply provided that such name not only designates the colour of the product but a specific type of product corresponding to that colour. There exists however no such link between a classic black colour and the computer application software applied for. Computer software is a programme used to operate computers which by its very nature is colourless (31/08/2016, R 664/2016-4, ‘OPAL BLUE’, § 9-10).

The opponent enclosed various documents showing the use of ‘CLASSIC BLACK’ for the marketing of products, mainly mobile phones and accessories. None of these products are software, however, and consequently this evidence has no impact on the above finding.

Visually and aurally the signs coincide in ‘CLASSIC’, which is nevertheless a non-distinctive term.

The signs also coincide in ‘BLACK’; this, however, is part of a ten-letter word in the earlier sign, whereas it is an individual element in the contested sign. If the meaning of ‘BLACKBERRY’ is understood, consumers would not single out the element ‘BLACK’. Thus consumers will not equate this part of a complex word with the element ‘BLACK’ of the contested sign, where it denotes a colour.

In may be that ‘BLACK’ is dissected from ‘BLACKBERRY’ in the earlier sign, notably by consumers only perceiving a meaning in this word but not in ‘BERRY’. However in such a case ‘BLACK’ would denote a colour describing characteristics of mobile phones and consequently would lack distinctive character.

Consequently, the signs are visually and aurally similar to a low degree.

Conceptually, as explained above, there are two scenarios depending on the consumers’ perception of the semantic content of the signs. One the one hand, one part of the consumers will see a fruit of excellent, important or typical nature in the earlier sign, and an unadorned, important, excellent dark colour in the contested one. On the other hand, other consumers will only detect a laudatory word referring to excellence, importance, and a colour which is descriptive in the earlier sign.

In both cases, the signs are conceptually similar to a low degree, because any conceptual coincidence carries little weight as it concerns elements lacking distinctiveness.  

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 the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The opponent argues that the contested application is merely an inversion of the earlier trade mark and refers to the case 11/06/2009, T‑67/08, InvestHedge. It must be acknowledged that the mere inversion of the elements of a mark cannot allow the conclusion to be drawn that there is no visual similarity. However, even if in the present case there is a visual similarity, it is of low degree on account of the distinctive character of the coinciding elements and the presence of additional distinctive elements.

Notably, ‘CLASSIC’ lacks distinctive character and its capacity to identify the commercial origin of the goods is correspondingly limited.

This lack of distinctive character also applies to ‘BLACK’ in the earlier sign if it is the only element perceived in ‘BLACKBERRY’, given that it is a common colour for mobile phones. Therefore, the part of the public only grasping basic English terms will focus on the distinctive elements of the signs, ‘BERRY’ in the earlier mark and ‘BLACK’ in the contested mark where it has no descriptive meaning for software. The consumers can thereby safely distinguish between the signs.

The English-speaking public understanding the meaning of ‘BLACKBERRY’ is even less likely to get confused, as they will immediately identify two different concepts in the signs, a fruit and a colour. Once again, the coincidence in the word ‘CLASSIC’ has little importance.

For this reason, the opponent’s arguments related to opposition No B 2 146 580, SUN EXOTIC/EXOTIC SUNRISE cannot apply either, given that in that case SUN/SUNRISE were distinctive and even linked to each other conceptually.

Considering all the above, even in the context of similar goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected under Article 8(1)(b) EUTMR.

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.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 02/09/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. Following an extension requested by the opponent, this time limit expired on 07/03/2017.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DRAGOSTIN

Marianna KONDAS

Julie GOUTARD

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.