(Trade mark without text) | Decision 2766304

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
izquierda, 28001 Madrid, Spain (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 766 304 is upheld for all the contested goods.
2. International registration No 1 298 826 is entirely refused protection in respect
of the European Union.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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
designating the European Union No 1 298 826 for the figurative mark ,
namely against all the goods in Class 9. The opposition is based on European Union

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trade mark registration No 13 076 831 for the figurative mark . The
opponent invoked Article 8(1)(b) EUTMR.
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
rejected.
For international registrations designating the European Union, the ‘date of filing’ or,
where applicable, the ‘date of priority’ of the contested mark within the meaning of
Article 47(2) EUTMR, that is to say for the purposes of establishing the five-year
period of use obligation for the earlier mark, is considered to be the date of
registration, the date of subsequent designation of the European Union or the date of
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
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.

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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;
Downloadable electronic publications and manuals (handbooks); Electrical cables;
Regulating apparatus, electric; Computer circuit boards; Fuel consumption
measuring apparatus; Petrol level gauges; Fuel consumption meters; Portable
computers; Monitors [computer programs]; Telematic terminal apparatus; Telematic
apparatus; Global Positioning System [GPS] apparatus; Radio and communications
technology apparatus, telecommunications apparatus and apparatus for navigation
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
administration, planning and control of vehicles in a vehicle fleet.
Class 37: Maintenance of computer hardware for data processing installations
and data processing equipment; Maintenance of software-controlled apparatus and
equipment; Installation of computer installations and computer networks and of
installations with mobile telephones and mobile data processing terminals.
Class 38: Online services, namely telecommunications for vehicle positioning;
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;
Consultancy relating to the creation of computer software; Electronic programming;
Construction of databases; Storage of data in computer databases; Consultancy in
the field of computer software, maintenance of computer software; Technical analysis
of business procedures and processes for electronic data processing; Planning of
computer installations and computer networks and of installations with mobile
telephones and mobile data processing terminals; Computer consultancy (hotlines);

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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
peripherals; accessories for the electronic devices, namely, laptop case, keypads,
screen protectors, stylus pens; camera case and support, cellular phone case and
stand, tablet case and stand, vehicle mount for select mobile devices, tablet sleeve,
case for cameras, and photographic equipment; carrying cases for cell phones,
tablets and laptops; holders, protective cases and stands specially adapted for
electronic devices; notebook computer carrying cases, sleeves especially adapted
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
services to show the relationship of individual goods and services to a broader
category, is exclusive and restricts the scope of protection only to the goods and
services specifically listed.
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 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
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.
The contested electronic apparatus and devices, namely, computers include, as a
broader category, the opponent’s portable computers. Since the Opposition Division

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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.
The contested photographic equipment is included in the broad category of the
opponent’s apparatus for recording, transmission or reproduction of images.
Therefore, they are identical.
The contested electronic apparatus and devices, namely, computer peripherals are
similar to the opponent’s portable computers because they have the same producers,
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.
The contested accessories for the electronic devices, namely, laptop case, keypads,
screen protectors, stylus pens; carrying cases for tablets and laptops; tablet case
and stand, tablet sleeve; holders, protective cases and stands specially adapted for
electronic devices; notebook computer carrying cases, sleeves especially adapted
for holding laptops and notebook computers, notebook computer cooling pads; USB
device adapter, USB cable, USB hubs and switches, converters are similar to the
opponent’s data processing apparatus because they have the same producers,
distribution channels and end users and are complementary to each other.
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
apparatus, as they can have the same end users and distribution channels.
Furthermore, they are complementary to each other.
The contested electronic controllers for consumer electronic devices, namely, TV,
electronic mobile devices are similar to the opponent’s regulating apparatus, electric

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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
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.
As regards the holder’s argument that the conflicting goods are not in competition
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.
c) The signs
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).

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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.
Visually, the signs are very similar shapes. However, they differ in the rounded
bottom part of the earlier mark, which is wider than that of the contested sign, the gap
in the lower part of the contested sign and the curve at the right-hand side of the
contested sign, which ends higher than that of the earlier sign.
Despite the differences between the signs – which are discernible only after a careful
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
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 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
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.
The goods and services are partly identical and partly similar. The signs are visually
highly similar. The differences between the signs are confined to small details that

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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
comparison must be made between the signs as they were registered or as they
appear in the application for registration (08/12/2005, T-29/04, CRISTAL
CASTELLBLANCH, EU:T:2005:438, § 57). Therefore, the opponent’s argument that a
red depiction of the contested sign would result in identity between the signs cannot
hold. The holder’s assertion that the colour is the most dominant and distinctive
element of the signs is also erroneous from a legal point of view. First, in the case of
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
claims that the earlier sign will be associated with a transport hook because the
opponent’s customers are transportation companies. Thus, the holder does not
adhere to a certain line of argumentation but rather contradicts itself. A clear and
unambiguous determination of how the signs will be perceived by the relevant public
is neither possible nor necessary. In any case, both signs are fanciful figurative signs
that create nearly the same overall impression. It cannot be inferred with certainty
from the graphic depiction of the signs what message they convey. The fact the
opponent’s goods target transportation companies does not influence the public’s
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
signs. They do not consist of a single letter or a number. Therefore, the rules
concerning short signs are not applicable. For this reason also, the Office’s decisions
cited by the holder are not relevant to the present case because the conflicting signs
in the cited decisions contain at least one letter.

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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.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 13 076 831. It follows that the contested trade mark
must be rejected for all the contested goods.
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
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.
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

Decision on Opposition No B 2 766 304 page: 10 of 10
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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