OPPOSITION No B 2 784 273

Refune Music Ltd., 20 Stasikratous Street, Cramvis Building, Office 101, 1065 Nicosia, Cyprus, and Axwell Music AB, c/o MA Nykoping AB, Vastra Kvarngatan 64, 61132 Nykoping, Sweden (opponents), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands, (professional representative)

a g a i n s t

Peter Le Fol, 18-20 Dumeresq Street, St Helier JE2 3RL, Jersey (applicant), represented by Christian Bunke, 16 Saxon Road, Cambridge CB5 8HS, United Kingdom (professional representative).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 784 273 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 556 988 is rejected in its entirety.

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

REASONS:

The opponents filed an opposition against all the goods and services of European Union trade mark application No 15 556 988 (figurative mark: ), namely goods and services in Classes 9 and 38. The opposition is based on European Union trade mark registration No 13 157 391 (figurative mark: ). The opponents invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

1. The goods and services

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

Class 9:        Apparatus for recording, transmission and reproduction of sound or images; magnetic data carriers, recording discs; compact discs; interactive compact discs (CD-I’s); long-playing records (LP’s), tapes, cassette tapes, videotapes, audio players and audio apparatus; apps (software); software; headphones; loudspeakers; audio equipment; microphones; spectacles, sun glasses; musical sound recordings; audio-visual recordings, namely, compact discs and downloadable MP3 files; digital data carriers; USB-sticks; record playing turntables.

Class 38:        Telecommunications.

The contested goods and services are the following:

Class 9:         Computer software and applications for mobile devices for updating, notifying and presenting contact information; computer software and applications for mobile devices for searching and retrieving information across a computer network; computer software and applications for mobile devices to enable users to connect through a single point of contact by means of telephone numbers, email addresses or other contact information.

Class 38:         Communication services by means of electronic transmission of messages, data and documents; providing electronic message alerts via the internet; electronic exchange of data stored in databases accessible via telecommunication networks; telecommunication services to enable users to connect through a single point of contact by means of telephone numbers, email addresses or other contact information; telecommunication services to enable users to connect through a single point of contact using location information.

As a preliminary remark, contrary to the applicant’s argument, there is no requirement for the opponents to ‘indicate the intended purpose’ of the goods and services in the specification, and, therefore, failing to indicate their purpose does not mean that there is no ‘basis for comparison’. The main requirement is that the goods and services for which protection of the trade mark is sought should be identified with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought. As the opponents’ earlier European Union trade mark has been registered and its list of goods and services is sufficiently clear and precise, nothing prevents the comparison of the goods and services.

Contested goods in Class 9

An application, also known as ‘application software’ or an ‘app’, is computer software that is designed to help the user perform various tasks on a computer. The word is also used to refer to the small ‘apps’ that are designed for mobile phones; however, the definition covers all applications on smartphones, tablets and computers. Therefore, the contested computer software and applications for mobile devices for updating, notifying and presenting contact information; computer software and applications for mobile devices for searching and retrieving information across a computer network; computer software and applications for mobile devices to enable users to connect through a single point of contact by means of telephone numbers, email addresses or other contact information are included in the broad category of the opponents’ software. Consequently, they are identical.

Contested services in Class 38

The contested communication services by means of electronic transmission of messages, data and documents; providing electronic message alerts via the internet; electronic exchange of data stored in databases accessible via telecommunication networks; telecommunication services to enable users to connect through a single point of contact by means of telephone numbers, email addresses or other contact information; telecommunication services to enable users to connect through a single point of contact using location information are included in the broad category of the opponents’ telecommunications. Therefore, they are identical.

2. The signs

Earlier trade mark	Contested sign

The signs differ in some, albeit negligible, aspects, such as the length of the stems. However, since the perception of identity between two signs is not always the result of a direct comparison of all the characteristics of the elements compared, insignificant differences between trade marks may go unnoticed by the average consumer. An EUTM application should be considered identical to the earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54).

Therefore, the signs are considered identical.

The applicant claims that the marks are dissimilar ‘by virtue of use’. However, on which goods the applicant uses or wishes to use the mark does not alter the sign applied for itself, nor does it influence the identity established between the signs. When assessing identity or similarity, the signs have to be compared in the form in which they are registered or applied for. The actual or possible use of the marks in another form is irrelevant when comparing signs (09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38).

3. Global assessment, other arguments and conclusion

The signs and the goods and services are identical. Consequently, the opposition must be upheld under Article 8(1)(a) EUTMR.

Therefore, the opposition is well founded on the basis of the opponents’ European Union trade mark registration No 13 157 391. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other ground, namely Article 8(1)(b) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponents in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponents 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

Denitza STOYANOVA-VALCHANOVA

Martin EBERL

Sigrid DICKMANNS

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.