OPPOSITION DIVISION
OPPOSITION No B 2 508 847
A. Hanson, 9 Cheriton Drive, Plumstead, London SE18 2RE, United Kingdom
(opponent), represented by Agile IP LLP, Airport House, Purley Way, Croydon,
Surrey CR0 0XZ, United Kingdom (professional representative)
a g a i n s t
Octonull Korlátolt Felelősségű Társaság, Petőfi Sándor utca 11., 1052 Budapest,
Hungary (applicant), represented by Sziklai&Andrejszki Ügyvédi Iroda, Petőfi
Sándor utca 11. IV. em. 20., 1052 Budapest, Hungary (professional representative).
On 30/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 508 847 is partially upheld, namely for the following
contested goods and services:
Class 9: Educational apparatus and simulators; apparatus, instruments and
cables for electricity; information technology and audiovisual
equipment; optical devices; recorded content; navigation, guidance,
tracking, targeting and map making devices.
Class 42: IT services; design services; testing, authentication and quality
control.
2. European Union trade mark application No 13 623 202 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services.
3. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 13 623 202 for the figurative mark
Decision on Opposition No B 2 508 847 page: 2 of 8
, namely against all the goods and services in Classes 9 and 42. The
opposition is based on European Union trade mark registration No 12 496 584 for the
word mark ‘BULLINGO’. 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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Apparatus, instruments and materials for transmitting and/or receiving
and/or recording sound and/or images; computer programs; non-downloadable
computer software; downloadable computer software; computer applications;
computer interface software; interactive computer software; computer applications
for use with mobile phones, personal computers and handheld computers;
downloadable audio and video recordings; computer games; computer software;
computer software with multimedia and interactive functions; mobile telephones;
computer software for use in connection with music and entertainment-related audio,
video, text and multi-media content, software featuring musical sound recordings,
entertainment-related audio, video, text and multi-media content; computer software
and firmware for operating system programs, data synchronization programs, and
application development tool programs for mobile phones, personal and handheld
computers; sound effect apparatus and instruments (computer software); electronic
tone generators (computer software); screen saver software; software for creating
and delivering electronic greeting cards, messages and electronic mail.
Class 42: Computer software technical support services; computer software
development and design; consulting services in the field of computer software,
computer software development and computer software design; providing on-line
support services for computer program users; computer software design and
updating; computer software technical support services; development of computer
software application solutions; services for designing computer software; installation,
updating, maintenance and repair of computer software; creating and maintaining
web-sites; design and development of web-sites featuring multimedia materials;
application service provider (ASP) services featuring computer software; application
service provider (ASP) services featuring software for authoring, downloading,
transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing
and organizing text, graphics, images, and electronic publications; support and
consultation services for developing computer systems and databases; consultancy
and advisory services in relation to all of the aforesaid.
Decision on Opposition No B 2 508 847 page: 3 of 8
The contested goods and services are the following:
Class 9: Scientific research and laboratory apparatus, educational apparatus and
simulators; safety, security, protection and signalling devices; diving equipment;
apparatus, instruments and cables for electricity; information technology and
audiovisual equipment; magnets, magnetizers and demagnetizers; measuring,
detecting and monitoring instruments, indicators and controllers; optical devices,
enhancers and correctors; recorded content; navigation, guidance, tracking, targeting
and map making devices; devices for treatment using electricity.
Class 42: IT services; design services; testing, authentication and quality control.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
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 information technology and audiovisual equipment include, as a
broader category, or overlap with, the opponent’s apparatus and instruments for
transmitting and/or receiving and/or recording sound and/or images. Since the
Opposition Division cannot dissect ex officio the broad categories of the contested
goods, they are considered identical to the opponent’s goods.
The contested educational apparatus and simulators overlap with the opponent’s
apparatus and instruments for transmitting and/or recording sound in, for example,
audiovisual educational apparatus and simulators. Therefore, they are identical.
The contested optical devices constitute a broad category that covers goods such as
video cameras. Consequently, these contested goods overlap with the opponent’s
apparatus and instruments for transmitting and/or recording sound. Therefore, they
are identical.
The contested recorded content includes, as a broader category, or overlaps with,
the opponent’s computer software. Since the Opposition Division cannot dissect ex
officio the broad category of the contested goods, they are considered identical to the
opponent’s goods.
The contested apparatus, instruments and cables for electricity include, for example,
apparatus and instruments for accumulating electricity (e.g. batteries) or for
conducting electricity (e.g. cables). These contested goods are similar to the
opponent’s apparatus and instruments for recording sound and/or images, as
nowadays multimedia electronic devices combine a variety of functionalities, such as
video camera, mobile phone, mobile computing platform, etc. Batteries (i.e.
apparatus and instruments for accumulating electricity) are indispensable for the use
of the opponent’s goods. In addition, in the particular context of visual and sound
reproduction, the quality of cables is one of the parameters that determine the quality
of the recording of sound and/or images. Therefore, the contested apparatus,
instruments and cables for electricity and the opponent’s apparatus, instruments and
Decision on Opposition No B 2 508 847 page: 4 of 8
materials for recording sound and/or images have the same relevant public and
distribution channels. Furthermore, they are complementary.
The contested navigation, guidance, tracking, targeting devices and map making
devices and the opponent’s apparatus, instruments and materials for transmitting
and/or receiving sound and/or images have certain points in common, as nowadays
items of apparatus for receiving and transmitting sound and images (such as mobile
phones) incorporate various functions, such as navigational and guidance functions.
The contested goods and the opponent’s goods may have the same purpose,
producers, distribution channels and relevant public. Furthermore, these goods may
be in competition. Therefore, they are at least similar.
The remaining contested goods, namely scientific research and laboratory
apparatus; safety, security, protection and signalling devices; diving equipment;
magnets, magnetizers and demagnetizers; measuring, detecting and monitoring
instruments, indicators and controllers; optical enhancers and correctors; devices for
treatment using electricity, are not sufficiently related to any of the opponent’s goods
and services in Classes 9 and 42 (which are essentially apparatus and instruments
for receiving and transmitting sound and images, mobile telephones, computer
software and AV recordings in Class 9 and various IT and consulting services in
Class 42). The contested goods and the opponent’s goods and services differ in their
natures, purposes and methods of use. They do not have the same
producers/providers or distribution channels and are neither in competition, nor
complementary. Therefore, they are dissimilar.
Contested services in Class 42
The contested IT services include, as a broader category, the opponent’s computer
software technical support services. Since the Opposition Division cannot dissect ex
officio the broad category of the contested services, they are considered identical to
the opponent’s services.
The contested design services include the designing of a variety of products, such as
software design. As such, the contested services include, as a broader category, the
opponent’s services for designing computer software. Since the Opposition Division
cannot dissect ex officio the broad category of the contested services, they are
considered identical to the opponent’s services.
The contested testing, authentication and quality control are broad categories of
services that may be applied to different technical and scientific areas, as well as in
the IT field as part of the quality assurance process. Testing refers to the process of
verifying that a product works as expected. Authentication is the action of
establishing that something is genuine or valid. Quality control is a procedure or set
of procedures intended to ensure that a manufactured product or performed service
adheres to a defined set of quality criteria or meets the requirements of the client or
customer. These contested services have certain points in common with the
opponent’s computer software development and design. The services under
comparison may, for example, be part of the same process by which software is
created and checked before being brought to the market. They may be offered by the
same specialists and may target the same public through the same channels to
satisfy similar or complementary needs. Therefore, these services are highly similar.
Decision on Opposition No B 2 508 847 page: 5 of 8
b) 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 and services found to be identical or similar (to
different degrees) are directed partly at the public at large (e.g. educational
apparatus and audiovisual apparatus in Class 9) and partly at business customers
with specific professional knowledge or expertise in, inter alia, the IT field (e.g.
testing, authentication and quality control in Class 42). The relevant public’s degree
of attention will vary from average to higher than average, depending on the exact
nature of these goods and services and their impact on the economic activities of the
business customers in question.
c) The signs
BULLINGO
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 ‘BULLINGO’. In the case of word marks, the word
as such is protected, not its written form. Therefore, it is irrelevant whether the word
mark is depicted in lower or upper case letters, or in a combination thereof.
The contested sign is a figurative sign containing the verbal element ‘Billingo’ written
in a stylised handwritten typeface in red. Above this element is the letter ‘B’, depicted
in white inside a red circle.
Neither of the marks under comparison has any element that could be considered
clearly more dominant (visually eye-catching) than other elements.
Nevertheless, 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).
Decision on Opposition No B 2 508 847 page: 6 of 8
The verbal element ‘BULLINGO’, constituting the earlier mark, has no meaning for
the relevant public and is therefore distinctive to an average degree in relation to the
relevant goods and services.
The verbal element ‘BILLINGO’ of the contested sign does not exist in common
parlance and will be perceived by the relevant public in the European Union as a
distinctive and fanciful word with no straightforward meaning. Therefore, it has an
average degree of distinctiveness in relation to the relevant goods and services in
Classes 9 and 42.
The current practice of the Office is that single letters have a concept. The public in
the relevant territory will perceive the letter ‘B’ depicted inside a circle in the
contested sign as a letter of the Latin alphabet (see, for example, 08/05/2012,
T-101/11, G, EU:T:2012:223, § 56); this element has an average degree of
distinctiveness in relation to the relevant goods and services, as it is not related to
these goods and services or any of their characteristics.
Visually, the signs coincide in the sequence of letters ‘B*LLINGO’, placed in the
same order in the verbal elements of the marks. The marks differ in their second
letters, ‘U’ in the earlier mark and ‘I’ in the contested sign, as well as in the letter ‘B’
depicted inside a circle in the contested sign and in the stylisation of that sign, which
is not particularly striking. Moreover, consumers are accustomed to encountering
trade marks in which one or more letters are depicted in a fanciful way.
Considering the fact that the verbal elements of the marks differ in only one letter out
of eight, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the letters
‘B*LLINGO’, present identically in both signs. The pronunciation differs in the sound
of the signs’ second letters, ‘U’ in the earlier mark and ‘I’ in the contested sign, which
are both vowels. Consequently, the verbal elements ‘BULLINGO’ and ‘BILLINGO’
have the same number of syllables, rhythm and intonation.
The pronunciation also differs in the sound of the letter ‘B’ depicted inside a circle in
the contested sign. Nevertheless, given the position of this element, it is highly likely
that a significant part of the relevant public will not pronounce it, as it may imagine
that this letter refers to the initial letter of the word ‘BILLINGO’.
Therefore, the marks are aurally similar to a high degree.
Conceptually, the public in the relevant territory will perceive the letter ‘B’ in the
contested sign as a Latin letter. However, the earlier mark has no meaning for the
public in the relevant territory. Since one of the signs will not be associated with any
meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
Decision on Opposition No B 2 508 847 page: 7 of 8
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 goods and 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.
e) 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 11 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).
As seen above, the goods and services are partly identical or similar (to different
degrees) and partly dissimilar. The earlier mark enjoys an average degree of
distinctiveness per se in relation to the relevant goods and services.
The signs are visually and aurally similar to a high degree on account of the
coincidences between the verbal elements ‘BULLINGO’ and ‘BILLINGO’, while the
signs are not conceptually similar, since the earlier mark will not be associated with
any meaning.
Therefore, taking into account 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 the visual and aural
similarities between the signs are sufficient to lead to a likelihood of confusion,
including a likelihood of association, between the marks, even though consumers
may display an above average degree of attention with respect to some of the goods
and services. Even consumers who pay a high degree of attention need to rely on
their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel,
EU:T:2013:605, § 54).
Considering all the above, there is a likelihood of confusion on the part of the public
and the opposition is partly well founded on the basis of the opponent’s European
Union trade mark registration No 12 496 584.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be identical or similar (to different degrees) to the goods
and services of the abovementioned earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this article and directed at these goods cannot be successful.
Decision on Opposition No B 2 508 847 page: 8 of 8
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) EUTMR, where each party succeeds on some heads and fails on
others, or if reasons of equity so dictate, the Opposition Division will decide a
different apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Begoña URIARTE
VALIENTE
Boyana NAYDENOVA Christian RUUD
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.