OPPOSITION DIVISION

OPPOSITION No B 2 753 054

Punto y Linea 07, S.L., Bailen, 5-7ª, 08010 Barcelona, Spain (opponent),

represented by Almudena Abellán Pérez, Plaza de la Fuensanta, nº 2- 8ºC. Edificio

Hispania, 30008 Murcia, Spain (professional representative)

a g a i n s t

BluPoint Ltd, The University of Southampton Science Park, 2 Venture Road,

Chilworth, Southampton, Hampshire SO16 7NP, United Kingdom (applicant),

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

Preliminary remarks

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 all the goods and services of European

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

thereto; industrial analysis and research services; design and development of

computer hardware and software.

The contested goods and services are the following:

Class 9: Hardware and software systems for transmitting and receiving, without the

aid of the Internet, digital materials, text, images, videos, audio and applications to

mobile and hand held devices and computers.

Class 38: Telecommunications services; chat room services; portal services; e-mail

services; providing user access to the Internet; radio and television broadcasting; all

of the aforesaid in relation to transmitting and receiving, without the aid of the

Internet, digital materials, text, images, videos, audio and applications to mobile and

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

Computers are devices that compute, especially programmable electronic machines

that perform high-speed mathematical or logical operations or that assemble, store,

correlate or otherwise process information. Hardware devices are the physical

components of that system.

Computers need programs to operate. Software is composed of programs, routines,

and symbolic languages that control the functioning of the hardware and direct its

operation.

Therefore, the contested hardware and software systems for transmitting and

to the opponent’s design and development of computer hardware and software in

The contested telecommunications services; chat room services; portal services; e-

mail services; providing user access to the Internet; radio and television

aid of the Internet, digital materials, text, images, videos, audio and applications to

mobile and hand held devices and computers and the opponent’s distribution and

transmission of photographs, images, and other information via the Internet are at

least similar to a high degree. All these services are telecommunication services or

telecommunication-related services. They have the same nature and purpose. They

are also in competition. Furthermore, they target the same public and are sold in the

same outlets.

Contested services in Class 42

to the provision of services related to transmitting and receiving, without the aid of

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 various

degrees are directed partly at the public at large and partly at business customers

with specific professional knowledge of IT.

The degree of attention will vary from average to high depending on the specialised

nature of the goods and services.

c) The signs

BLUPOINT

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in

affect the protection of the first mark, even if only in relation to the perception of

consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,

EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the

relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the

comparison of the signs on the Spanish- and Bulgarian-speaking parts of the public,

for which the elements ‘BLUPOINT’ and ‘BLIPOINT’ are meaningless.

The earlier mark is a figurative mark, consisting of the word ‘blipoint’ in a lower case

typeface. ‘bli’ is in black whereas ‘point’ is in green. The contested sign is the single-

word mark ‘BLUPOINT’.

namely ‘u’ in the contested sign and ‘i’ in the earlier mark, as well as in the typeface

of the earlier mark. The fact that the earlier mark is depicted in lower case letters has

no significance, given that the contested sign is a word mark. The protection which

results from registration of a word mark concerns the word mentioned in the

application for registration and not the specific graphic or stylistic elements

accompanying that mark (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 42).

Therefore, the contested sign can be written ‘BLUPOINT’ but also ‘blupoint’, which

eliminates this difference.

Established case-law asserts that it is the beginning of a sign that normally seizes

and holds the attention of the consumer (17/03/2004, T-183/02 & T-184/02,

Mundicor, EU:T:2004:79, § 81; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102,

§ 64-65), as there is a tendency to overlook the middle parts of words. Furthermore,

the longer the marks are, the more differences are needed in order to distinguish

therefore has no reason to deviate from these principles in the present case.

do not outweigh their identical beginnings and endings (‘bl’ and ‘point’).

degree from the relevant public’s perspective.

of the marks’ third letters, namely ‘u’ in the contested sign and ‘i’ in the earlier mark.

The marks have the same number of syllables, as well as the same rhythm and

intonation. The difference caused by the third letter of each sign is outweighed by the

sound and rhythm of the remaining components, which the signs have in common.

Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant

territory. Since a conceptual comparison is not possible, the conceptual aspect does

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.

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.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the

relevant factors and, in particular, a similarity between the marks and between the

goods or services. Therefore, a lesser degree of similarity between goods and

services may be offset by a greater degree of similarity between the marks and vice

versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the signs are visually and aurally similar to a high degree, and

the conceptual comparison has no influence.

degree and partly similar to the opponent’s services.

features of the earlier mark – the marks have seven out of eight letters in common

marks, but must trust in their imperfect recollection of them (15/03/2012, T-288/08,

Zydus, EU:T:2012:124, § 52). The strong similarity between the signs is clearly

and the typeface of the earlier mark.

The applicant argued that the contested sign is currently in use. This argument has to

be disregarded, given that the right to an EUTM begins on the date when the EUTM

is filed and not before, and from that date on the EUTM has to be examined with

regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative

grounds for refusal, events or facts that happened before the filing date of the EUTM

are irrelevant because the rights of the opponent, insofar as they predate the EUTM,

Union trade mark registration No 8 475 451. It follows that the contested trade mark

must be rejected for all the contested goods and services.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former

Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.

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.

The amount determined in the fixation of the costs may only be reviewed by a

decision of the Opposition Division on request. According to Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be

filed within one month of the date of notification of this fixation of costs and will be

deemed to have been filed only when the review fee of EUR 100

(Annex I A(33) EUTMR) has been paid.