OPPOSITION No B 2 686 627

O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

Mario Sánchez Dominguez de la Campa, Paseo de Aragón 82-2, 46120 Alboraya/ Valencia, Spain (applicant), represented by José Luis Gosálbez Albero, Plaza Gala Placidia 1, 12A., 08006 Barcelona, Spain (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 686 627 is upheld for all the contested services.

2.        European Union trade mark application No 14 905 517 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 905 517 ‘BLUE ONE’. Initially, the opposition was based on the following earlier rights:

1. European Union trade mark registration No 5 235 940 ‘O2 BLUE’;
2. European Union trade mark registration No 5 086 897 ‘BLUE ROOM’;
3. German trade mark registration No 302 015 107 779 ‘BLUE ONE’;
4. German trade mark registration No 302 012 009 050 ‘Blue Insider’;
5. German trade mark registration No 302 013 004 404 ‘Blue Deals’;
6. German trade mark registration No 302 013 000 869 ‘Blue All-in’;
7. German trade mark registration No 302 015 107 780 ‘BLUE 1’;
8. German trade mark registration No 302 015 108 197 ;
9. United Kingdom trade mark registration No 3 003 477 ‘THE BLUE’;
10. United Kingdom trade mark registration No 2 647 617 ‘BLUE DOOR’;
11. United Kingdom trade mark registration No 2 429 598 ‘MY BLUE BOOK; MYBLUEBOOK; MY BLUEBOOK’ (series).

On 09/08/2016, following the applicant’s limitation of the contested list of services by which the services in Class 38 were deleted, the opponent maintained the opposition against the remaining contested services in Classes 35 and 42. However, the opponent based the opposition on specific services, in Classes 35 and 42, covered by earlier German trade mark registrations No 302 015 107 779 ‘BLUE ONE’ and No 302 015 107 780 ‘BLUE 1’. The opponent expressly withdrew all other earlier marks and other goods/services from the basis of opposition.

The opponent invoked Article 8(1)(a) and (b) EUTMR.

SUBSTANTIATION OF EARLIER GERMAN TRADE MARK No 302 015 107 779

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 is 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) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the evidence filed by the opponent along with the notice of opposition (on 13/04/2016) concerning German trade mark registration No 302 015 107 779 consists of an extract from the German trade mark database, ‘DPMA’. The document shows that the ‘Proprietor’ of this trade mark registration, at the moment of extracting the data from the register (13/04/2016), was ‘O2 Holdings Limited’.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier German trade mark No 302 015 107 779, because of the discrepancy in the owner data. In that regard, it has to be recalled that the opposing party to the present proceedings is ‘O2 Worldwide Limited’.

The evidence does not contain any conclusive indications that would suggest that the opponent is an authorised licensee of the trade mark proprietor, that there was a transfer of rights, or that the opponent and the owner of the trade mark are the same legal entity, which has merely changed its name.

It follows that the evidence does not demonstrate the opponent’s entitlement to file the opposition insofar as it is based on this trade mark.

On 25/04/2016, the opponent was given two months, commencing after the ending of the cooling-off period, to submit further facts, evidence and arguments for completing the opposition. This time limit expired on 31/08/2016.

The opponent did not submit any further evidence concerning the substantiation of this earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must, therefore, be rejected as unfounded, as far as it is based on earlier German trade mark registration No 302 015 107 779 ‘BLUE ONE’.

The examination of the opposition proceeds on the basis of the only remaining earlier right, namely German trade mark registration No 302 015 107 780 ‘BLUE 1’.  

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

According to the opponent’s limitation of the basis of the opposition as submitted on 09/08/2016, the services on which the opposition is based are the following:

Class 35:        Advertising; retail services and online retail services relating to glasses, sunglasses and data processing equipment.

Class 42:        Scientific and technological services and research; industrial analysis; design and development of computer hardware and software; computer consultancy services; Engineering services; technical advice.

The contested services, after limitation, are the following:

Class 35:        Electronic commerce, namely providing of information relating to goods via communications networks, for advertising and sale of jewellery, watches and clocks, clothing and other accessories; Advertising, marketing and promotional consultancy, advisory and assistance services.

Class 42:        Information technology relating to electronic commerce in connection with jewellery, watches and clocks, clothing and other accessories.

As a preliminary remark, the Opposition Division notes the applicant’s argument that the contested sign is intended for use with the applicant’s commercial activity consisting in the online sale of jewellery, watches, clothing and other complementary items, via the applicant’s website. To support this argument, the applicant filed some printouts from its website and proof of attendance at trade fairs in Italy and Spain.

In that regard, it has to be clarified that, although some of the wordings used in the contested list of services concern e-commerce activities relating to the abovementioned goods, the comparison of the services must be carried out on an objective basis, taking into account the services on which the opposition is based, including broad categories of services, where applicable.  

Contested services in Class 35

An interpretation of the wording of the applicant’s list of services is required to determine the scope of protection of the contested services. The contested wording in English, advertising, marketing and promotional consultancy, advisory and assistance services, corresponds to the following wording in Spanish: asistencia, asesoramiento y consultoría en servicios de promoción, marketing y publicidad. For the contested EUTM application, Spanish was chosen as the first language and English as the second language. The version in the first language is the decisive one. Therefore, the contested consultancy, advisory and assistance services are all deemed to be related to advertising, marketing and promotion.

In view of the above, the contested advertising, marketing and promotional consultancy, advisory and assistance services are included in the broad category of, or overlap with, the opponent’s advertising. Therefore, they are considered identical.

The term ‘namely’, used in the contested electronic commerce, namely providing of information relating to goods via communications networks, for advertising and sale of […] 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.

It follows that the contested electronic commerce, namely providing of information relating to goods via communications networks, for advertising and sale of jewellery, watches and clocks, clothing and other accessories overlap with the opponent’s advertising, since it is impossible to clearly separate these categories which both include the provision of information for advertising and sales promotion purposes. Therefore, these services are considered identical.

Contested services in Class 42

The contested information technology relating to electronic commerce in connection with jewellery, watches and clocks, clothing and other accessories encompasses design and development of computer software, such as the creation, programming and maintenance of electronic platforms which enable the provision of the specified e-commerce services. Therefore, the contested services cannot be clearly separated from, and they overlap with, the opponent’s design and development of computer software. Therefore, they are considered 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 specialised services that are mainly directed at business customers with professional knowledge or expertise in the fields of advertising and information technology (IT).

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased services.

3. The signs

BLUE 1	BLUE ONE
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).

Since English is commonly and extensively used in marketing, business management and the IT industry, it can be reasonably assumed that the relevant public in the pertinent territory has sufficient knowledge of English to understand the meanings of the English words comprised in the signs at issue. Therefore, the term ‘BLUE’, present in both signs, will be associated with, inter alia, the colour blue. Moreover, the equivalent word in German is rather close, namely ‘blau’. This concept is fanciful in the context of the services at issue, and it enjoys an average degree of distinctiveness in each sign.

The element ‘BLUE’ is juxtaposed to the concept of the numeral ‘one’ referring to, inter alia, the smallest whole number; unity. It is represented as a digit, ‘1’, in the earlier mark and as a word, ‘ONE’, in the contested sign. These combinations do not amount to a meaningful expression, and will be perceived as mere sums of their parts.

The element ‘ONE’ of the contested sign, being a very basic English word, will be immediately understood by the relevant public as referring to the same idea as the numeral ‘1’ of the earlier mark. Even though the distinctiveness of these individual elements is weak, as the concepts conveyed by them are used, in trade, to refer to the idea of a united service package, a single point of outlet for goods or services, the ‘all-in-one’ principle, something being unique or first etc., it has to be borne in mind that both signs at issue convey exactly the same message which consists in the combination of the elements ‘BLUE’ and ‘1’/‘ONE’.

Conceptually, the signs are identical.

Visually, the signs coincide in the distinctive element ‘BLUE’. However, they differ in the earlier mark’s element ‘1’ and the contested sign’s element ‘ONE’, both of which have limited distinctiveness. Therefore, the signs are similar at least to an average degree.

Aurally, the pronunciations of the signs coincide in the sounds corresponding to the distinctive element ‘BLUE’. Whilst a part of the relevant public will pronounce the element ‘1’ of the earlier mark in German, ‘eins’, it can be reasonably assumed that, because of the juxtaposition with the English term, ‘BLUE’, another part of the relevant public will refer to the numeral in English, ‘one’, rendering the signs aurally identical for that part of the public.

The assessment will proceed on this basis.

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 clear 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested services are identical to those covered by the earlier mark. The signs are strikingly similar on account of the fact that they share the distinctive element, ‘BLUE’, in combination with the numeral, ‘1’, or the word, ‘ONE’, that represents the same concept, albeit weak for the services in question. The assessment of likelihood of confusion is focused on the part of the public who pronounces the earlier mark, ‘BLUE 1’, as in English, which results in aural identity between the signs.

The differences identified between the signs are clearly insufficient to enable the average consumers, who only rarely have the chance to make a direct comparison between different marks and must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), to safely distinguish between the signs, including where they display a high degree of attention when choosing the services at issue. 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).

It is common practice, in the relevant market sectors, to make variations of commercial designations, for instance by substituting words with numerals and vice versa. It is highly conceivable that, when encountering the signs at issue, the public may assume that they are slightly different configurations of the same trade mark.

In its observations, the applicant argues that there are several EU trade marks for services in Classes 35 and 42 that contain the words ‘BLUE’ and ‘ONE’. The applicant claims that any consideration that the opponent has exclusive rights in the denomination ‘BLUE ONE’/‘1’ would be contrary to the reality. In support of its argument the applicant refers to some EU trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the applicant’s argument does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the words ‘BLUE’ and ‘ONE’. Moreover, the earlier mark in the present case is ‘BLUE 1’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, and based on the average degree of inherent distinctiveness of the earlier mark, there is a likelihood of confusion on the part of the public for whom the signs are aurally identical. Given that a likelihood of confusion for only part of the relevant public in the pertinent territory is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 015 107 780. 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

Edith Elisabeth VAN DEN EEDE

Solveiga BIEZA

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.