OPPOSITION No B 2 643 321

O2 Worldwide Limited, 20 Air Street, London  W1B 5AN, United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge  CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

OXY4 GmbH, Strandstraße 15, 18233 Am Salzhaff, Germany (applicant)

On 14/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 643 321 is partially upheld, namely for the following contested goods and services:

Class 9: Recorded content; Information technology and audiovisual equipment; Measuring, detecting and monitoring instruments, indicators and controllers; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Scientific research and laboratory apparatus, educational apparatus and simulators.

Class 10: Physical therapy equipment.

Class 14: Time instruments.

Class 35: Business assistance, management and administrative services; Commercial trading and consumer information services; Advertising, marketing and promotional services.

Class 42: Design services; IT services; Science and technology services.

2.         European Union trade mark application No 14 668 123 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 668 123. The opposition is based on the following European Union trade mark registrations (EUTM), for which the opponent claimed Article 8(1)(b) EUTM:

• No 9 463 324
• No 9 279 456
• No 9 463 399

In respect of the remaining earlier EUTM, namely No 4 949 376, the opponent additionally claimed Article 8(5) EUTMR with a reputation in Germany, Czech Republic, United Kingdom, Slovakia and Ireland.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM No 9 463 324.

1. The  goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus; apparatus for the transmission of sound and image; telecommunications apparatus; mobile telecommunication apparatus; mobile telecommunications handsets; computer hardware; computer software; computer software downloadable from the Internet; PDAs (Personal Digital Assistants), pocket PCs, mobile telephones, laptop computers; telecommunications network apparatus; drivers software for telecommunications networks and for telecommunications apparatus; protective clothing; protective helmets; computer software recorded onto CD Rom; SD-Cards; glasses, spectacle glasses, sunglasses, protective glasses and cases therefor; contact lenses; cameras; camera lenses; MP3 players; audio tapes, audio cassettes, audio discs; audio-video tapes, audio-video cassettes, audio-video discs; video tapes, video cassettes, video discs; CDs, DVDs; electronic publications (downloadable); mouse mats; magnets; mobile telephone covers, mobile telephone cases; magnetic cards, encoded cards; parts and fittings for all the aforesaid goods.

Class 35: Advertising; business management; business administration; office functions; retail services and online retail services relating to scientific, nautical, surveying, photographic, cinematographic, optical weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire extinguishing apparatus, apparatus for the transmission of sound or image, telecommunications apparatus, mobile telecommunication apparatus, mobile telecommunications handsets, computer hardware, computer software, computer software downloadable from the Internet, PDAs (Personal Digital Assistants), pocket PCs, mobile telephones, laptop computers, telecommunications network apparatus, drivers software for telecommunications networks and for telecommunications apparatus, protective clothing, protective helmets, computer software recorded onto CD-Rom, SD-Cards, glasses, spectacle glasses, sunglasses, protective glasses and cases therefor, contact lenses, cameras, camera lenses, MP3 players, audio tapes, audio cassettes, audio discs, audio-video tapes, audio-video cassettes, audio-video discs, video tapes, video cassettes, video discs, CDs, DVDs, electronic publications (downloadable), mouse mats, magnets, mobile telephone covers, mobile telephone cases, magnetic cards, encoded cards; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 37: Building construction; repair; installation services; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 38: Telecommunications; telecommunications services; mobile telecommunications services; telecommunications portal services; Internet portal services; mobile telecommunications network services; fixed line telecommunication services; provision of broadband telecommunications access; broadband services; broadcasting services; television broadcasting services; broadcasting services relating to Internet protocol TV; provision of access to Internet protocol TV; Internet access services; email and text messaging services; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; communications services for accessing a database, leasing of access time to a computer database, providing access to computer databases, rental of access time to a computer database; operation of a network, being telecommunication services; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 39: Transport; packaging and storage of goods; travel arrangement; provision of information relating to travel, transport, traffic, traffic flows and congestion; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; interactive entertainment services; electronic games services provided by means of any communications network; entertainment services provided by means of telecommunication networks; information services relating to education, training, entertainment, sporting and cultural activities provided by means of telecommunication networks; provision of news information; television production services, television programming services; television production and television programming services provided by means of Internet protocol technology; provision of entertainment by means of television and Internet protocol television; provision of musical events; entertainment club services; discotheque services; presentation of live performances; night clubs; rental of music venues and stadiums; casino services; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

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; IT services; computer programming services; services of a programmer; recovery of computer data; consultancy in the field of computer hardware; computer programming; duplication of computer programs; computer rental; computer software design; installation of computer software; maintenance of computer software; updating of computer software; rental of computer software; rental of computer hardware; computer system design; computer systems analysis; consultancy in the field of computer software; conversion of data or documents from physical to electronic media; creating and maintaining websites for others; data conversion of computer programs and data (not physical conversion); hosting computer sites (web sites); services of engineers; technical consulting and expert advice and expert opinion relating to technology; rental of data processing apparatus and computers; technical services relating to projection and planning of equipment for telecommunications; services of information brokers and providers, namely product research for others; weather forecasting; research in the field of telecommunication technology; monitoring of network systems in the field of telecommunications; technical support services relating to telecommunications and apparatus; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 43: Services for providing food and drink; temporary accommodation; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 44: Medical services; veterinary services: hygienic and beauty care for human beings or animals; agriculture, horticulture end forestry services; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 45: Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals; legal services; management and exploitation of copyright; arbitration services; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

        

The contested goods and services are the following:

Class 9: Recorded content; Information technology and audiovisual equipment; Measuring, detecting and monitoring instruments, indicators and controllers; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Scientific research and laboratory apparatus, educational apparatus and simulators.

Class 10: Physical therapy equipment.

Class 14: Time instruments.

Class 24: Textile goods, and substitutes for textile goods.

Class 35: Business assistance, management and administrative services; Commercial trading and consumer information services; Advertising, marketing and promotional services.

Class 42: Design services; IT services; Science and technology services.

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 compared to Class 9 of the earlier right

All of the contested goods are identical for the reasons set out below.

• The contested broad wording recorded content includes computer software recorded onto CD Rom and it cannot be dissected ex-officio.

• The contested Information technology equipment includes data processing equipment whilst the contested audiovisual equipment includes the apparatus for reproduction of sound or images and the Opposition Division cannot dissect ex officio the broad categories of the contested goods.

• The contested measuring, detecting and monitoring instruments, indicators and controllers are included in the broader measuring, signalling and checking (supervision) apparatus and instruments. Monitoring is a synonym of checking (supervision) whilst detecting can be considered as inherent to signalling or checking given that it refers to discovering or ascertaining something and flagging it accordingly. Indicators and controllers are included in apparatus and instruments.

• Nautical apparatus and instruments from Class 9 of the earlier right is a broad term which refers to an array of devices used in sailing to navigate, set a course or draw a map as well as take into account distances, depths, wind speeds, etc and includes the contested navigation, guidance, tracking, targeting and map making devices.
• The contested optical devices, enhancers and correctors are included in the optical apparatus and instruments from the earlier right as these include any kind of optical goods, whether to improve or magnify vision.

• The contested scientific research and laboratory apparatus are included in the broader scientific apparatus and instruments.

• The contested educational apparatus and simulators are included in the teaching apparatus and instruments from the earlier right to the extent that the latter also includes simulators which are merely devices that recreate a certain scenario or atmosphere for teaching purposes.

Contested goods in Class 10

The contested physical therapy equipment are apparatus designed to be used by people who need rehabilitation after an accident or illness which has left them with no or limited physical capabilities.  When comparing with medical services from Class 44 there are relevant points of contact given that such equipment may be supplied by the same undertakings that provide the services and in this respect there is a complementary relationship. Further, they coincide in purpose, namely improving health or well-being in some way and target the same end-users. As such, they are similar to a low degree.

Contested goods in Class 14

The contested time instruments in Class 14 are articles that keep time and refer to horological and chronometric instruments in general. Such devices are used to monitor, track time and there are some points of contact with the checking (supervision) apparatus and instruments from Class 9 of the earlier right. Indeed, as previously indicated, monitoring is a synonym of checking (supervision) and in this sense the broad nature of the term means that it includes apparatus and instruments used for monitoring and tracking, whether it be time, calories or steps for example. Such goods are increasingly found in the same sections of department stores and are directed at the same consumers. Additionally, in view of the coincidences these goods may be produced by the same undertakings as it is also fairly common for one device to perform a variety of different functions like telling the time, measuring heart-rate and other physical traits. Thus, there is at least a low degree of similarity.

Contested goods in Class 24

Textile goods, and substitutes for textile goods refer to a number of a goods such as household linen in general (bed covers, curtains, towels) but does not refer to clothing items in any way. Indeed, even if the earlier right includes protective clothing items in Class 9, these do not bear any resemblance to the contested goods since these do not extend to items to be worn.

When comparing these goods with the goods and services from the earlier right there is an absence of any coinciding factors. Indeed, goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Though on occasions there is an interdependent relationship leading to complementarity (as is the case with telecommunications apparatus in Class 9 and telecommunications services in Class 38), this is not the case here. Indeed, the services from the earlier right relate to the fields of advertising, business office functions, finance, insurance, building, repair, installation, telecommunications, transport, packaging and storage, travel, education, entertainment, sporting and cultural activities, a variety of IT and science related services, food and drink services, medical, hygienic and beauty care, personal and social services as well as  legal services. All are services which are far-removed from the goods in Class 24. Moreover, the retail services in Class 35 relate to goods in Class 9 that are also dissimilar. Indeed, even considering the full list of goods and services from the earlier right, these are still dissimilar; none of them coincide in any relevant points of contact their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore they do not share a complementary nature, nor are they in competition with one another. They are dissimilar. 

Contested services in Class 35

The contested business management and administrative services; advertising are equally designated by the earlier mark despite being worded slightly differently.  Considering that business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company then the contested business assistance is clearly included therein. The contested marketing and promotional services are examples of advertising services and are included therein. Consequently, all the contested services are identical.

Commercial trading and consumer information services is considered a vague term and as such can only be interpreted in its natural and literal meaning. In this sense and also in view of the specific class in which it is protected, such services are business support activities including the processing of orders, advisory services and the arrangement of commercial contracts for example. Clearly, there are relevant points of contact with the business management services from the earlier right as these are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants who give assistance and information in this regard. From this stance there are several coincidences which mean that both sets of services may well derive from the same undertakings and be aimed at the same consumers, meaning also a match in distribution channels. As such the services are at least similar. 

Contested services in Class 42

The contested IT services; science and technology services are equally designated by the earlier mark despite slightly differing wording and are, thus, identical. This finding equally applies to the contested design services as this broad term which cannot be dissected ex-officio, includes, for example, the opponent’s design of computer hardware and software.

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 and services found to be identical or similar (to differing degrees) are directed at the general public and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price. For example, a higher degree of attention will be given to business management services due to the impact on the smooth running of the company and the financial implications.

3. The signs

O4
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.

Given that English speakers usually refer to the numeral ‘0’ as the letter ‘O’ rather than referring to it as ‘Zero’, the Opposition Division finds it appropriate to focus the comparison of signs on the English speaking part of the public.

O/04 has no semantic content as such but will be perceived either as the letter ‘O’ or the numeral ‘0’, followed by the numeral ‘4’. Having said this, whether the first character is perceived as a numeral or a letter, it will still be referred to as ‘O’ by English speakers. Neither of the elements bears any association to the goods and services at issue.

It may be that the contested sign’s ‘0’ is perceived by as being dominant due to its larger representation and red and blue shading in comparison to the following digit, also featured slightly below. However, it is also true that the lower right hand part of the ‘0’ has been erased which also means that ‘4’ is also visually appreciated thus making it difficult to single out one element over the other.

Visually, the signs only differ in the figurative representation of the contested sign, the colours and shading as well as in the contours of ‘0’ as compared to ‘O’. However, such differences are minimal and there is still a high degree of similarity.

Aurally and conceptually, the signs are identical.

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 invoked a number of trade marks and claimed that all were highly distinctive. Whether or not this is the case, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed at this point (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The goods and services are identical, similar to varying degrees and dissimilar. The degree of attention varies from average to high and on the basis of the English speaking part of the public the signs are aurally and conceptually identical and highly similar from a visual stance.

It should also be borne in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In this regard, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub brand, a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49). Consequently, for all the goods and services, with the exception of those found dissimilar, there is a patent risk that the marks will be confused.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. Indeed, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to varying degrees to those of the earlier trade mark. Indeed, even for those found similar to a low degree, cconsideration should be given to the principle established by the Court, namely that of interdependence, 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).

The contested goods in Class 24 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.

The remaining earlier marks claimed under Article 8(1)(b) EUTMR, namely EUTM No 4 949 376  and No 9 463 399 cover services in classes 35, 36, 37, 39, 43, 44 and 45, all of which are included in the earlier EUTM previously used as a basis for the comparison under Article 8(1)(b)EUTMR. As such, it is not necessary to analyse these remaining trade marks in this sense as the outcome would be no better.

The earlier EUTM No 9 279 456 (O2) on the other hand, protects, inter alia, textiles and textile goods, not included in other classes; bed and table covers; table mats not of paper in Class 24. Therefore the examination will proceed for this mark.

2. LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR in relation to EUTM No 9 279 456

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 and services on which the opposition is based are, inter alia, the following

Class 24: Textiles and textile goods, not included in other classes; bed and table covers; table mats not of paper.

The remaining contested goods to be compared are:

Class 24: Textile goods, and substitutes for textile goods.

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.

Textile goods are equally designated by both marks leading to identity and substitutes for textile goods has to be considered as highly similar as the only difference is in the materials (for example plastic tablecloths as compared to tablecloths made of fabrics).

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 relevant goods are directed at the general public and professionals. The degree of attention is average.

3. The signs

O2
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 refers to the concept of a chemical formula, namely, oxygen in its stable form. This formula is commonly known throughout the world and as such the relevant public will be aware of this concept. ‘O2’ is distinctive in relation to the goods.

‘04’ has no semantic content as a whole other than the letter ‘O’ or the numeral ‘0’ followed by a numeral ‘4’. Having said this, whether the first character is perceived as a numeral or a letter, it will still be referred to as ‘O’ by English speakers for example. Neither of the elements bears any association to the goods and services at issue.

It may be that the contested sign’s ‘0’ is perceived by as being dominant due to its larger representation and red and blue shading in comparison to the following digit, also featured slightly below. However, it is also true that the lower right hand part of the ‘0’ has been erased which also means that ‘4’ is also visually appreciated thus making it difficult to single out one element over the other.

It is also worth mentioning that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression.

Visually, the signs differ in their second character, the figurative representation of the contested sign, the colours and shading, as well as in the contours of the first character. Given that the signs are only made up of two characters and considering the differences, they are similar to a low degree.

Aurally, the signs differ in the second character of the signs; in English this would be ‘two’ versus ‘four, in German ‘zwei’ versus ‘vier’ and successively in the other relevant languages. Though the first character may be identically uttered, the fact that the signs are only made up of two characters means the differences in the second character are paramount, leading to a sufficiently distinct overall impression and the signs are deemed similar to a low degree.

Conceptually, the earlier mark has a clear concept noted above whilst the contested sign will be understood as a combination of a letter/numeral and numeral. As such they are not conceptually similar.

The examination will proceed given that the signs show similarities.

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 all of its earlier marks, including that at issue, had a high distinctive character for the goods and services protected in Germany, Czech Republic, United Kingdom, Slovakia and Ireland. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

Between 26/07/2016 and 01/08/2016 and within the prescribed deadline, the opponent submitted the following evidence:

• Witness statement by Amanda Clay, Head of Brand Experience, of one of the subsidiary companies which form the opponent’s company. The opponent marked this submission as ‘confidential’, as such, the content will be referred to only in general terms without divulging any sensitive information. Ms Clay briefly sets out the history of the company. The extensive statement sets out year by year, the successes of the opponent’s company and its brand starting from 2002 in the United Kingdom. A huge number of press releases are referred to regarding the mobile devices released by the opponent and the date the company commenced trading stock on the London Stock Exchange. Given the extensive nature of the material provided, Ms Clay highlights several important events (and press releases) such as the implementation of the first wireless email solution (in 2001); the huge growth of its client base and its significant revenue.. Reference is made to agreements with high profile IT companies in order to market and distribute mobile data services as well as a report (04/03/2002) that the opponent will supply and maintain a “state of the art” digital radio service to the Ministry of Defence which will become the “de-facto” military standard to secure UK mainland radio communications; development of new messaging and interactive services with Arsenal FC and Big Brother 3; the opponent was the UK market leader for SMS; further information corresponding to increases in client base and revenue; high profile sponsorship of company of ‘Big Brother’ which resulted in the handling of 6.6 million text messages. In this respect, mention is made of the average audience.

• In 2003, press releases refer to the opponent as being the top text messaging provider; provision of a range of interactive mobile services for “Pop Idol” (popular reality show); launching of a new mobile video service in the UK enabling customers to download and stream video content, this was the most mobile video service of its kind in the UK and content included news, comedy, music, fashion and sport. Another press release refers to online subscription growing by 5% per month and the company’s online channel was the most popular in Europe. Partnerships with top music providers, record labels in order to enable consumers to download a variety of music are also mentioned. References to independently audited figures (25/11/2003) showing that the company has the best ever UK mobile call success rate, beating all figures previously published by Oftel (an independent regulator and competition authority for the UK communications industries, with responsibilities across television, radio, telecommunications and wireless media).

• 2004 includes a further range of press releases regarding the expanse of the opponent’s services and its continuing growth. Of particular interest and dated 26/05/2004, a press release announced the partnership of the company with the English National Opera regarding the first ever live opera concert. Further partnerships with sports bodies are mentioned as well as the opponent being selected by the National Lottery operator Camelot to provide the SMS messaging capability that will help users to play the lottery on their phones.

• 2005 includes press releases which refer to the total customer base of 23.2 million overall with 14.2 million customers in the UK as well as mention of further contracts and sponsorships.

• 2006 includes further press releases regarding partnership with BMW, new platforms for further interactive services and a contract awarded by the UK government which concerns the provision of fire and rescue services with a new secure and highly resilient digital radio system. 

• 2007 includes information concerning the opponent’s intention to improve response times and enhance patient care for Welsh ambulance services, announcing that the Welsh Ambulance Service NHS trust has signed a contract worth GBP 32 million with the opponent for the provision of advanced, secure digital communications. There is also information concerning the “O2 wireless festival”; a contract with AA (Automobile Association in the UK) until 2011; further information regarding broadband improvements; exclusive contract with Apple’s iPhone; launch of 02 WALLET which paves the way for the mass market use of mobile phones to pay for purchases or travel around London. Reference to the “best service” accolade is also made.

• 2008 amongst the press releases are those that show that the opponent has joined forces with LP+ to bring mobile learning to UK schools, further references to improved services and partnerships and on 27/06/2008 a featuring entitled “The O2 celebrates its first birthday” announcing the success of the venue.

• 2009, of particular interest is a release regarding the O2’s expansion into personal finance.

• 2010 more information and press releases regarding the expansion of the O2 brand into new fields and markets as well as the growth in their client base and revenues.

• 2011-2014 a variety of press releases concerning O2 and its media services, sponsorship of the English rugby team, concerns and collaborations with musical artists, environmental sustainability plans, joint ventures with banks and other telecom operators.

A full assessment of the evidence is not necessary as it is clear from the materials submitted that there is no mention of the goods in Class 24 since the exhibits and statements refer to telecommunications apparatus in Class 9 as well as services in Classes 38 and 41. These goods and service were previously compared and found dissimilar to the contested goods.

As such, this claim was made in relation to goods and services that bear no similarity to the relevant goods. Therefore, no enhanced distinctiveness or reputation has been found and as such the distinctiveness of the earlier mark will rest on its distinctiveness per se (see in this regard decision of 14/06/2011, R1588/2009-4 ‘PINEAPPLE’). Given that there is no association with the relevant goods, it has an average degree of inherent character.

5. Global Assessment

The goods are identical and highly similar and target both the public at large and the professional public displaying an average degree of attention. The distinctive character of the earlier mark is average.

However, the signs show a low visual and aural similarity and the conceptual divergence plays a pivotal role in setting the marks apart, thus allowing the relevant consumer to easily differentiate them. The earlier mark refers to a chemical formula whilst the contested mark is a combination of numerals or a letter and numeral (depending on the perception) and the strong concept conveyed by the earlier mark is a significant factor in distancing the marks. In this particular scenario, this conceptual difference counteracts the low visual and phonetic similarity (12/01/2006, C-361/04 P, Picaro, EU:C:2006:25, § 20).

Notwithstanding the fact that consumers rarely have a chance to compare marks side by side, relying instead on the imperfect picture retained in their mind, even the average consumer is deemed to be reasonably well-informed and reasonably observant and circumspect (C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Thus, they will clearly be aware of the differences between the marks and distinguish them accordingly.

Even considering the premise that a low degree of similarity between signs can be offset by a greater degree of similarity between the goods and services and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17), the Opposition Division considers that it is not plausible that the public would either confuse or associate the signs in any way given the circumstances. In essence, the similarity is reduced to the first character which moreover is a one-digit number and consumers would not confuse the signs merely on this basis given that there is a limited amount of one-digit numbers and as such consumers will frequently be faced with such signs. As such the difference generated in the second character is paramount and sufficient to dispel any confusion.

Therefore the opposition is not successful in this regard. The examination will therefore proceed on the basis of Article 8(5) EUTMR.

3. REPUTATION – ARTICLE 8(5) EUTMR

The opponent relies on EUTM No 4 949 376 with a reputation in Germany, Czech Republic, United Kingdom, Slovakia and Ireland.  The opponent claims reputation for:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus; apparatus for the transmission of sound and image; telecommunications apparatus; mobile telecommunication apparatus; mobile telecommunications handsets; computer hardware; computer software; computer software downloadable from the Internet; PDAs (Personal Digital Assistants), pocket PCs, mobile telephones, laptop computers; telecommunications network apparatus; drivers software for telecommunications networks and for telecommunications apparatus; protective clothing; protective helmets; computer software recorded onto CD Rom; SD-Cards; glasses, spectacle glasses, sunglasses, protective glasses and cases therefor; contact lenses; cameras; camera lenses; MP3 players; audio tapes, audio cassettes, audio discs; audio-video tapes, audio-video cassettes, audio-video discs; video tapes, video cassettes, video discs; CDs, DVDs; electronic publications (downloadable); mouse mats; magnets; mobile telephone covers, mobile telephone cases; magnetic cards, encoded cards; parts and fittings for all the aforesaid goods.
Class 38: Telecommunications; telecommunications services; mobile telecommunications services; telecommunications portal services; Internet portal services; mobile telecommunications network services; fixed line telecommunication services; provision of broadband telecommunications access; broadband services; broadcasting services; television broadcasting services; broadcasting services relating to Internet protocol TV; provision of access to Internet protocol TV; Internet access services; email and text messaging services; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; communications services for accessing a database, leasing of access time to a computer database, providing access to computer databases, rental of access time to a computer database; operation of a network, being telecommunication services; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; interactive entertainment services; electronic games services provided by means of any communications network; information services provided by means of telecommunication networks relating to entertainment; provision of news information; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services provided over a telecommunications network.        

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 shall 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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark. Given that due cause was not claimed it is assumed that there is none.

1. The signs

Reference is made to the comparison of signs as carried out under section 2 c) and those findings are equally valid here.  Indeed the fact that this particular earlier mark is featured on a split level representation does not change the considerations made therein, nor the visual and aural similarity to a low degree and the absence of any conceptual coincidence.

2. Reputation of the earlier trade mark

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 14/10/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Germany, Czech Republic, United Kingdom, Slovakia and Ireland for the goods and services noted above:        

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

Reference is made to the previous list of evidence of reputation (see section 2 d)). The opponent further states that due to the huge advertising and promotion, combined with extensive sales, the “O2” brand has achieved massive recognition in the marketplace and has come to be identified uniquely with the opponent in the minds of consumers. The opponent claims that its company is one of the most important players in the mobile telecommunications field. The opponent refers to an advertising awareness study conducted between 2002 and 2004 in which the opponent came second and another from 2013-2013 placing the opponent in first place.

The witness statement is fully backed up by press releases and copies from the relevant media. Also, several awards that have been won are mentioned and in the exhibits it can be seen that in 2003-2004 the “O2” brand was awarded the “Business Superbrand” award. Indeed, the publication “Business Superbrands” lists the 60 strongest business to business brands on an annual basis. In 2004, it was awarded the “Superbrands Award”, in 2004 the “Cool Brand Leader”. In 2004, it won the Institute of Practitioners in Advertising Award, an award supported by the Financial Times amongst others and mentioned as the “most prestigious advertising award a brand can win”. The publication mentions, with reference to a NOP survey, “One of O2’s most impressive achievements has been how rapidly it has established itself in the market…” Further awards include the “Marketing Initiative of the Year Award” in November 2003 at The Utility Industry Achievement Award and the award for “Advertiser of the Year” awarded by the National Business Award, also in November 2003. “Best Network of the Decade” in October 2004 for showing the most innovation in encouraging the uptake of mobile data over the last ten years and again in November 2004 at the IPA Advertising Effectiveness Awards the Blue Ribband Grand Prix plus an additional Gold Award, acknowledging the company as having run the UK’s most successful advertising campaigns for the preceding two years. A number of other awards are mentioned in 2006 and 2007 for very similar feats. Whilst in 2008 the “O2” (arena) won “Venue of the Year” at the Music Week Awards 2008. Together with its partner (AEG Europe) it won “Music and Brand Partnership of the Year” category. The awards continue in the same vein until the relevant period. Also mentioned in the statement and attached in the exhibits is Millward Brown Optimor’s BrandZ Top 100, a ranking which identifies the world’s most valuable brands measured by their dollar value. The company occupies the 77th spot on the 2009 list with a value of USD 8 601 000 000 and is considered the 4th most valuable brand in the UK (after Vodafone, Tesco and HSBC). By 2010 “O2” occupied the 70th spot with a 23% increase in Brand Value and also ranked 14th in the Top 20 Risers Section.

Also referred to (and supported by exhibits) is the sponsorship of music festivals and events such as the “O2 Wireless Music Festival” in Hyde Park, London (more than 30 000 visitors a day): The “O2 party in the Park 2005” which took place in five major cities in the UK over a period of three months. Numerous other such events are referred to as well as “The Brits” which is the most prestigious music awards ceremony in the UK. In this regard the venue “The O2” is referred to with a 23 000 capacity arena, live music club, theatre, flexible exhibition space, deluxe multi-screen cinema, restaurants, cafés, bars and a proposed London regional casino. This musical and entertainment content is then brought exclusively to the “O2” phones and devices and indeed customers enjoy certain privileges such as first chance to book tickets. Reference is also made to The David Beckham Academy which is one of the first parts of a development project managed by its partner AEG which aims to transform the area into an entire entertainment and sporting destination. Further to this there are eleven music venues across the UK (several places in London, Birmingham, Bristol, Glasgow, Liverpool, Newcastle, Oxford, Sheffield and Leeds) which until 2013 (at least) have been re-branded as “O2 Academy” in order to promote music. Adverts from O2’s wireless festival, information concerning the O2 arena where a range of concerts are held and also where the finals of the Olympic gymnastic and basketball finals will be held.  Extremely successful groups and artists (AHA, Depeche Mode, Michael Jackson) are mentioned as having performed there and information goes back to its opening and through to 14/04/2009. Mention is also made of heavy sponsorship with the England Rugby Team.

Conclusion on reputation

The evidence is extensive but it is clear that the earlier trade mark has been subject to a long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources as annexed in the statement. The sales figures, marketing expenditure, outcomes from opinion polls and the number of awards going back to at least 2004 clearly show the success of the mark, of its continual growth and market presence as well as an innovative character that is constantly expanding and developing.

With regard to the services for which repute has been claimed, it is plain from the evidence that the opponent has successfully proven that it has gained a reputation for all the aforementioned services in Class 38 as well as those previously cited in Class 41. Not only has the opponent filed voluminous documentation in this regard concerning its telecommunication related services in Class 38 but also regarding its expansion into the education, entertainment, sporting and cultural industry as well as the development of its technical expertise. What commenced as partnerships or sponsorships with industry players have quickly grown into the opponent’s brand becoming known and reputed as one of these actual players due to the opponent’s investments and efforts made in this direction, as can be inferred from the evidence, the awards won and arguments presented by the opponent. As to the goods in Class 9, the evidence clearly relates to telecommunications apparatus.

All in all, the evidence unequivocally shows that the earlier trade mark enjoys a high degree of recognition among the relevant public for the goods and services indicated above.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs show some similarities. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The earlier mark has a reputation for telecommunication related goods and services as well as educational, sporting and cultural activities. Moreover it is inherently distinctive.

Textile goods, and substitutes for textile goods in Class 24 are the contested goods at issue.  It is clear that the goods and services are far removed from one another as the contested goods are made up of a number of items made from fabric (such as curtains, bed linen and the like). Despite the innovative character of the earlier mark and its expansion into various sectors as discussed above, it is difficult to see how the earlier mark would be brought to mind via the contested mark when it operates in a field that is so distinct namely that of telecommunications and the delivery of services intended to stimulate intellect and for recreational purposes.

Even if the comparison of signs shows similarities these are only low on a visual and aural basis due to the coincidence in the first of the two characters. Also of relevance is the absence of a conceptual link between the signs, indeed, the earlier mark refers to a chemical formula whilst the contested mark is a combination of numerals or a letter and numeral (depending on the perception). The strong concept conveyed by the earlier mark is a significant factor when examining whether or not there is a link. Reference is made to the previous global assessment on likelihood of confusion to support this line of reasoning.

The fact that the signs are so short, as indicated previously, means that the difference in the last character is paramount. Though it is clear that the rationale behind Article 8(5) EUTMR is not merely considering the trade mark as an indicator of origin but also the messages it conveys as to quality, image or lifestyle (see in this respect judgment of 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378 which refers to this and the ‘advertising function’), the fact remains that even under Article 8(5) EUTMR the opponent cannot expect to have blanket protection for any identical or similar sign for virtually any kind of good or service. In the current circumstances, the goods and services are so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (‘Intel’, § 49)

Even if the earlier mark has a strong reputation and a certain innovative and cutting-edge image this is in relation to goods and services which are so far-removed that it is not realistic to perceive a telecommunications based company moving into the textile sector. Further, though the evidence shows that the opponent has branched out into other areas these concern industries such as entertainment and finance. As such, in connection with the contested goods, while the relevant section of the public may overlap to some extent, those goods and services are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

4. Conclusion

The opposition under Article 8(5) EUTMR is not successful given the lack of a link and in view of the cumulative nature of the provision it is redundant to analyse further.

The contested application will therefore proceed to registration only for the goods in Class 24.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Alexandra APOSTOLAKIS

Vanessa PAGE

Lucinda CARNEY

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.