OPPOSITION DIVISION

OPPOSITION No B 2 766 304

Trendfire Technologies GmbH, Herrenberger Str. 56, 71034 Böblingen, Germany

(opponent), represented by Jakelski & Althoff Patentanwälte PartG mbB,

Mollenbachstraße 37, 71229 Leonberg, Germany (professional representative)

a g a i n s t

IBenzer Inc., 119-07 23rd ave FL1, College Point, NY 11356, United States of

America (holder), represented by A2 Estudio Legal, Calle Hermosilla, 59 Bajo

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

PRELIMINARY REMARK:

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponent filed an opposition against all the goods of international registration

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the holder so requests, the

opponent must furnish proof that, during the five-year period preceding the date of

filing or, where applicable, the date of priority of the contested trade mark, the earlier

trade mark has been put to genuine use in the territories in which it is protected in

connection with the goods or services for which it is registered and which the

opponent cites as justification for its opposition, or that there are proper reasons for

non-use. The earlier mark is subject to the use obligation if, at that date, it has been

registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be

priority of the contested international registration, as applicable. The earlier mark is

subject to the use obligation if, at that date, it has been registered for at least five

years.

The holder requested that the opponent submit proof of use of the trade mark on

which the opposition is based.

In the present case, the relevant date for the contested international registration (that

is, the date of international registration) is 18/12/2015.

Earlier trade mark No 13 076 831 was registered on 29/12/2014. Therefore, the

request for proof of use is inadmissible.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

goods and services, the distinctiveness of the earlier mark, the distinctive and

dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

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

Class 9: Software for the electronic processing of data; Firmware; Data

processing apparatus; Program and data carriers for electronic data processing;

Apparatus for remote transmission of data by means of cable or by wireless

transmission technology; Computer programs and computer software for mobile

telephones, mobile data processing terminals and related auxiliary apparatus;

and positioning; Transmitters, transreceivers, Antennas, Sensor, Checking

(supervision) apparatus; Communication devices; Apparatus for recording,

transmission or reproduction of messages or images; Apparatus for recording and

transmission of position data (vehicles and objects).

Class 16: Manuals (handbooks) and publications in printed form.

Class 35: Consultancy relating to professional business analysis and

organisation of business processes for electronic data processing; Organisational

administration of motor vehicles and consultancy relating thereto; Subscriptions

(arranging -) to a telematics, telephone or computer service [internet]; Computer

databases (compilation of information into-); Fleet management, namely commercial

Providing of access to data in computer databases; Cellular telephone

communication; Transmission of messages, images and audio signals by computer,

by mobile telephones and mobile data processing terminals; Internet services,

namely providing access to information and to computer software on the internet;

Telecommunications.

Class 39: Transport of individuals, animals or goods.

Class 41: Providing of training relating to computer hardware and software for

data processing installations.

Class 42: Consultancy for vehicle fleet businesses in connection with EDP

equipment therefor and the use of suitable computer software for transport;

Rental of computer software, computer hardware and of program-controlled data

processing equipment; Development of computers, development of computer

hardware and software for computers, computer peripherals, mobile telephones and

mobile data processing terminals (smartphones, tablet computers); Operating an

electronic internet platform for the representation of positions and status displays on

the internet.

The contested goods are the following:

Class 9: Electronic apparatus and devices, namely, computers and computer

for holding laptops and notebook computers, notebook computer cooling pads, and

earphone accessories, namely, earphone cushions, earphone pads, cord

management systems, earphone cases, and earphone extension cords; electronic

cables, namely data cables in the nature of connecting electrical cables, cables and

fibers for the transmission of sounds and images; electronic calculators; electronic

card readers; electronic computers; electronic controllers for consumer electronic

devices, namely, TV, electronic mobile devices; earphones, headphones, audio

equipment, speakers; optical lens; USB device adapter, USB cable, USB hubs and

switches, converters.

An interpretation of the wording of the list of goods and services is required to

determine the scope of protection of these goods and services.

The term ‘namely’, used in both the holder’s and the opponent’s lists of goods and

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,

on the ground that they appear in the same or different classes under the Nice

Classification.

The holder argues that the market targeted by each of the trade marks is very

different and submits printouts from the opponent’s and its own websites. The Office

reminds the holder that, during the five-year grace period for proof of use of the

earlier mark, the comparison of the goods required by Article 8(1)(b) EUTMR must

relate to the description of the goods covered by the earlier mark relied on in

opposition or those of the contested application and not the goods for which the trade

mark is actually used (22/03/2007, T-364/05, Pam Pluvial, EU:T:2007:96, § 85;

07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 30).

The relevant factors relating to the comparison of the goods or services include, inter

cannot dissect ex officio the broad category of the contested goods, they are

considered identical to the opponent’s goods.

The contested electronic computers are included in the broad category of the

opponent’s data processing apparatus. Therefore, they are identical.

The contested electronic calculators overlap with the opponent’s data processing

apparatus insofar as a computer is a calculating machine. Therefore, they are

identical.

distribution channels and relevant public and are complementary to each other.

The contested camera case and support, case for cameras are similar to the

opponent’s apparatus for recording, transmission or reproduction of images because

they have the same producers, distribution channels and relevant public and are

complementary to each other.

The contested cellular phone case and stand, vehicle mount for select mobile

devices; carrying cases for cell phones are similar to the opponent’s

telecommunications apparatus because they have the same producers, distribution

channels and relevant public and are complementary to each other.

screen protectors, stylus pens; carrying cases for tablets and laptops; tablet case

opponent’s data processing apparatus because they have the same producers,

The contested earphone accessories, namely, earphone cushions, earphone pads,

cord management systems, earphone cases, and earphone extension cords;

earphones, headphones, audio equipment, speakers are similar to the opponent’s

radio and communications technology apparatus. They target the same consumers,

are sold in the same sales outlets and are complementary to each other.

The contested electronic cables, namely data cables in the nature of connecting

electrical cables, cables and fibers for the transmission of sounds and images are

similar to the opponent’s electrical cables. They have the same producers,

distribution channels and relevant public.

The contested electronic card readers are similar to the opponent’s data processing

because they can have the same producers, distribution channels and relevant

public.

The contested optical lens is similar to the opponent’s apparatus for recording,

transmission or reproduction of images, as they have the same end users and

distribution channels. Furthermore, they are complementary to each other.

b) Relevant public — degree of attention

and target entirely different publics, it is irrelevant what goods both parties actually

manufacture or to what kind of customers they actually sell. The goods have to be

compared as they appear on the register and as they are applied for before the

Office (see, for example, 11/11/2010, R 1327/2010, MONELLA VAGABONDA VIP

(fig.) / VAGABOND et al., § 25).

In the present case, the goods found to be identical or similar are directed at the

public at large 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, the frequency of purchase and their price.

question must be based on the overall impression given by the marks, bearing in

Both signs are figurative marks that do not convey a clear meaning, although the

shape somewhat resembles an inverted question mark without the dot. The earlier

sign is red, while for the contested sign no colour is claimed. The earlier mark is a

solid shape, while the contested mark is interrupted by a white line that divides it into

two parts.

As the signs are fanciful and do not have any meaning in relation to the goods and

services in question, they are of average distinctiveness.

analysis of the signs side by side, which consumers are not expected to perform –

they convey almost the same overall visual impression and they are, therefore,

visually highly similar.

Purely figurative signs are not subject to a phonetic assessment. As both signs are

purely figurative, it is not possible to compare them aurally.

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

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 goods and services in question from the perspective of the

public in the relevant territory. Therefore, the distinctiveness of the earlier mark must

be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the

are discernible only when the signs are thoroughly inspected side by side. However,

average consumers rarely have the chance to make a direct comparison between

different marks, but must trust in their imperfect recollection of them (22/06/1999,

C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The holder argues that the most eye-catching and distinctive element in both signs is

their colour. The opponent contests this argument, alleging that all coloured

depictions of a trade mark fall within the scope of its black and white application, so

the red depiction of the contested sign can also be compared with the earlier sign,

resulting in their being identical. However, it must be borne in mind that the

a figurative sign the colour is an inherent part of the sign and does not constitute an

independent element thereof that could be considered dominant over and/or more

distinctive than other elements. Second, no undue weight should be given to the

colour, as the General Court found that the colour has little impact on the relevant

public (17/01/2012, T-522/10, HELL, EU:T:2012:9, § 50). Therefore, in the present

case the different colours are not an independent factor to be taken into account in

the assessment of likelihood of confusion and are not likely to alter the overall

impressions created by the signs based on their shapes and graphic depictions.

The holder alleges that the relevant consumers will undoubtedly associate the earlier

sign with a flame and the contested sign with a drop of water; therefore, it states, the

signs will convey different concepts. However, later in its submissions the holder also

opponent’s customers are transportation companies. Thus, the holder does not

from the graphic depiction of the signs what message they convey. The fact the

perception of the earlier sign. The signs have to be compared as registered or as

applied for and not in relation to the intended public.

The holder argues that, since the signs are short, the differences between them will

be noticed more easily. The Courts have not exactly defined what a short sign is.

However, signs with three or fewer than three letters/numbers are considered short

signs. The comparison between signs consisting of a single letter, or a combination of

three or fewer than three letters not recognisable as a word, follows the same rules

as that for word signs comprising a word, a name or an invented term (06/10/2004,

T-117/03 to T-119/03 and T-171/03, NL, EU:T:2004:293, § 47-48; 10/05/2011,

T-187/10, G, EU:T:2011:202, § 49).

In the present case, the signs are purely figurative and cannot be deemed short

Considering the above and in particular taking into account the identity or similarity

between the goods and the high degree of visual similarity between the signs, the

relevant public is likely to believe that the goods in question come from the same

undertaking or economically linked undertakings. The signs in question, which are

purely figurative, are very similar shapes and create nearly the same overall visual

impression. The slight differences in their graphic depictions are not striking enough

to counterbalance the similarities between them, and these differences are likely to

go unnoticed even by the part of the public that displays a higher than average

degree of attention.

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 holder 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

Lars HELBERT Alexandra APOSTOLAKIS Julia SCHRADER

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.