BLUPOINT | Decision 2753054

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),
represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United
Kingdom (professional representative).
On 20/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 753 054 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 426 331 is rejected in its entirety.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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
Union trade mark application No 15 426 331 for the word mark ‘BLUPOINT’, namely
against all the goods and services in Classes 9, 38 and 42. The opposition is based
on European Union trade mark registration No 8 475 451 for the figurative mark
. The opponent invoked Article 8(1)(b) EUTMR.

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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 services on which the opposition is based are the following:
Class 35: Advertising; business management; business administration; office
functions.
Class 38: Distribution and transmission of photographs, images, and other
information via the Internet.
Class 42: Scientific and technological services and research and design relating
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
hand held devices and computers.
Class 42: Scientific, technological and research and design services all relating to
the provision of services related to 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.
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

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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
receiving, without the aid of the Internet, digital materials, text, images, videos, audio
and applications to mobile and hand held devices and computers are closely linked
to the opponent’s design and development of computer hardware and software in
Class 42. This is because manufacturers of hardware and/or software will also
commonly provide hardware- and/or software-related services.
Although the nature of the goods and services is not the same, both the relevant
public and the usual producers/providers of the goods and services coincide.
Furthermore, these goods and services are complementary. Therefore, they are
considered similar.
Contested services in Class 38
The contested 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 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
The contested scientific, technological and research and design services all relating
to the provision of services related to 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 are included in the broad category of the
opponent’s scientific and technological services and research and design relating
thereto. Therefore, they are identical.
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.

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The degree of attention will vary from average to high depending on the specialised
nature of the goods and services.
c) The signs
BLUPOINT
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 unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
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’.
Neither ‘blipoint’ nor ‘blupoint’ has a meaning for the public under consideration and
they are both of average distinctiveness in relation to the goods and services at
issue.
Neither of the marks at issue has any element that can be considered more dominant
than the others.
Visually, the signs coincide in the letters ‘bl*point’ and differ in their third letters,
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

Decision on Opposition No B 2 753 054 page: 5 of 7
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
between them (14/09/2010, R 1581/2009-2, TEZALVO / TECLIVO, § 23). The
Opposition Division does not consider ‘blupoint’ and ‘blipoint’ to be short marks and
therefore has no reason to deviate from these principles in the present case.
The differing middle sections of these words, namely the letter ‘u’ versus the letter ‘i’,
do not outweigh their identical beginnings and endings (‘bl’ and ‘point’).
The applicant argues that consumers could perceive the earlier mark as ‘biipoint’ at
first glance. The Opposition Division disagrees with this argument, given that in the
earlier mark the letter ‘l’ and the letter ‘i’ are not the same height.
In the light of the foregoing, the visual features that the signs have in common
outweigh their differing features. Therefore, the signs are visually similar to a high
degree from the relevant public’s perspective.
Aurally, the signs coincide in the sound of the letters ‘bl*point’ and differ in the sound
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
not influence the assessment of the similarity of the signs.
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.
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.

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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.
The contested goods and services are partly identical, partly similar to at least a high
degree and partly similar to the opponent’s services.
The fact that the mark applied for reproduces to a striking degree the essential
features of the earlier mark – the marks have seven out of eight letters in common
and in the same order – leads to the conclusion that the signs are sufficiently similar
overall to conclude that the public under consideration might believe that the services
found to be identical or similar to various degrees come from the same trade origin or
from undertakings that are economically or industrially linked (17/10/2006, T-483/04,
Galzin, EU:T:2006:323, § 80; 21/10/2008, T-95/07, Prazol, EU:T:2008:455, § 56;
16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 90), in particular given that
consumers rarely have the chance to make a direct comparison between different
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
sufficient to outweigh the slight difference stemming from their respective third letters
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,
are earlier than the applicant’s EUTM.
Considering all the above, there is a likelihood of confusion on the part of the
Bulgarian- and Spanish-speaking parts of the public. As stated above in section c) of
this decision, a likelihood of confusion for only part of the relevant public of the
European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European
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.

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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.
The Opposition Division
Dorothee SCHLIEPHAKE Patricia LOPEZ
FERNANDEZ DE
CORRES
Steve HAUSER
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.
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.

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