OPPOSITION No B 2 741 539

Yello Strom GmbH, Siegburger Straße 229 (Torhaus), 50679 Köln, Germany (opponent), represented by Lichtenstein, Körner & Partner mbB, Heidehofstr. 9, 70184 Stuttgart, Germany (professional representative)

a g a i n s t

DotC United Inc., Trinity Chambers, PO Box 4301, Road Town, Tortola, British Virgin Islands (applicant), represented by Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 741 539 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 308 323 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 308 323. The opposition is based on, inter alia, European Union trade mark registration No 6 404 057. The opponent invoked Article 8(1)(b) EUTMR.

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 European Union trade mark registration No 6 404 057.

1. The goods and services

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

Class 9: Communications technology products, included in Class 9; software, data processing equipment and computers; electric apparatus; electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; gramophone records; calculating machines.

Class 35: Professional business and organisation consultancy in the energy sector; advertising, business management; business administration; office functions; commercial management services; marketing services, namely the marketing of new technologies, in particular in the environment and energy sector; temporary placement of personnel; professional business and organisation consultancy services in the energy sector.

Class 38: Telecommunications.

Class 42: Energy consultancy for domestic, commercial and industrial purposes; developing of integrated energy concepts; energy management, namely technical consultancy and planning regarding energy generation and distribution installations; technical and ecological consultancy in the energy sector; development of software architecture, modules and interfaces and the application thereof in electronic and electro-technical apparatus, components and systems; planning of waste treatment installations; environmental services, namely consultancy relating to the environment and the development of strategies for environmental risk management; research and development, in particular in the field of environmental technology; computer programming; acquiring, implementing and issuing of licences, research and development contracts; temporary accommodation; legal services.

The contested goods and services are the following:

Class 9: Computer programs [downloadable software]; Computer game software; Computer software applications, downloadable; Video game cartridges; Monitors [computer programs]; Downloadable music files.

Class 35: On-line advertising on a computer network; Marketing; Systemization of information into computer databases; Search engine optimization; Search engine optimisation; Web site traffic optimization; Web site traffic optimisation; Updating and maintenance of data in computer databases.

Class 42: Computer programming; Computer software design; Updating of computer software; Computer system design; Providing search engines for the internet; Providing information on computer technology and programming via a web site.

An interpretation of the wording of the lists of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of services in Classes 35 and 42, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, which is also used in the opponent’s list of services in Classes 35 and 42 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed 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

Given that software and computer programs are synonyms, the contested computer programs [downloadable software] and the opponent’s software are identical.

Moreover, the contested computer game software; computer software applications downloadable are specific types of software, which are included in the broad category of the opponent’s software. Therefore, these goods are identical.

In addition, since the contested monitors are clearly specified as belonging to the broad category of computer programs, they are included in the opponent’s broad category of software. Therefore, they are identical.

The contested downloadable music files are highly similar to the opponent’s gramophone records. A gramophone record (or phonograph record), commonly known as a vinyl record, is an analogue sound storage medium; therefore, the main difference between these two sets of goods is the fact that one is stored in an analogue storage medium, whereas the other is stored digitally. Therefore, although they differ in nature, they have the same purpose and end users. They are moreover sold in the same outlets and, since they are interchangeable, they are in competition.

Finally, the contested video game cartridges are similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images. Considering that, to play video games using the contested video game cartridges, consumers need both the cartridge and a games console – which is nothing other than a specific type of apparatus for transmission or reproduction of sound or images – these goods are complementary to each other. In addition, bearing in mind that games cartridges and consoles are usually sold together and by the same companies, they coincide in usual origin and are distributed through the same channels. Finally, they target the same consumers.

Contested services in Class 35

The contested service of on-line advertising on a computer network is included in the opponent’s broad category of advertising services. Therefore, these services are identical.

The contested marketing includes, as broader category, the opponent’s marketing services, namely the marketing of new technologies, in particular in the environment and energy sector. Since the Opposition Division cannot dissect ex officio this broad category of contested services, these services are considered identical.

The contested search engine optimization (listed twice) and web site traffic optimization (listed twice) correspond to activities that are similar to the opponent’s broad category of business administration. Indeed, like business administration services, the contested services of search engine optimization (listed twice); web site traffic optimization (listed twice) are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. In addition, they are very likely to be provided by the same companies and professionals, that is, inter alia, auditors or consultants.

Taking into account that office functions include the internal day-to-day operations of an organisation, including the administration and the support services in the ‘back office’, and that they mainly cover activities that are typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, etc., it is considered that the contested systemization of information into computer databases; updating and maintenance of data in computer databases are included in the opponent’s broad category of office functions. Therefore, these services are identical.

Contested services in Class 42

Computer programming is identically included in both lists of services.

The contested computer software design is included in the opponent’s broad category of computer programming. Therefore, they are identical.

In addition, since a computer system is a basic, complete and functional computer, including all the hardware and software required to make it functional for any user, the contested service of computer system design overlaps with the opponent’s computer programming. As a result, these services are identical.

Finally, the contested updating of computer software; providing search engines for the internet; providing information on computer technology and programming via a web site are similar to the opponent’s computer programming, since, despite their slight differences in nature, both the end users and the usual providers of these services are the same. Furthermore, they are complementary.

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 various degrees are directed at the public at large and at business consumers.

The degree of attention of the average consumer of the goods and services in question may vary from average to high, depending on the technical level of the goods, the frequency of purchase and their price (05/05/2015, T-423/12, Skype, EU:T:2015:260, § 22; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27; 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37).

3. The signs

yello	YELLOW BOOSTER
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the contested sign is composed of words that are meaningful in English. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark, ‘yello’, written in lower case letters. The contested sign is a word mark, ‘YELLOW BOOSTER’, written in upper case letters. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters.

Both marks are word marks and have no elements that could be considered more dominant (visually eye-catching) than other elements.

The English word ‘yellow’ of the contested mark will be seen as a reference to a colour. This word has no meaning in relation to the goods and services in question and therefore has a normal degree of distinctiveness (see to this effect, as regards goods in Class 9, 15/09/2015, R 2877/2014-4, ULTRA YELLOW / YELLO, § 21, and, as regards services in Classes 35 and 42, 20/03/2014, R 274/2013-4, YELLOW LOUNGE / YELLO, § 21 to 24).

However, the verbal element ‘booster’ of the contested sign will be associated with ‘increase or improvement of power or effectiveness’ (information extracted on 16/06/2017 from http://dictionary.cambridge.org/dictionary/english/booster and https://www.merriam-webster.com/dictionary/booster) by the relevant public. Bearing in mind that the relevant goods are technological goods and the services in question are business and information technology-related services, it is considered that this element is descriptive of the intended purpose of the goods and services in question, and, hence, non-distinctive for the English-speaking part of the relevant public.

Therefore, the element ‘yellow’ is the most distinctive element of the contested sign.

The word ‘yello’ forming the earlier mark does not exist as such in English. However, as it will be pronounced in almost the same way as the English word ‘yellow’, a part of the relevant public may perceive it as a misspelling of ‘yellow’, which, as already stated, refers to a colour (see, inter alia, 15/09/2015, R 2877/2014-4, ULTRA YELLOW / YELLO § 26; 23/11/2016, B 2 462 094, YELLOW BRAND PROTECTION; 08/03/2016, B 2 509 761, YELLOW auto). Even for the part of the public that will perceive ‘yello’ as a misspelling of ‘yellow’, this word has no meaning in relation to the goods and services in question and has, therefore, a normal degree of distinctiveness.

Visually, the signs coincide in the sequence of letters ‘yello*’. They differ in the additional letter ‘w’ of the word ‘yellow’ of the contested sign, as well as in the word ‘BOOSTER’ of the contested sign, which is considered non-distinctive.

The first parts of the conflicting marks are nearly identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually highly similar.

Aurally, although the last letter ‘w’ of ‘yellow’ will be pronounced, and, hence, represents an aural difference between the signs, this difference is so slight that it will most probably go unnoticed. The marks differ in the additional syllables (boo-ster) placed at the end of the contested sign, which are considered non-distinctive in relation to the goods and services in question.

Therefore, the signs are aurally highly similar.

Conceptually, as explained above, the earlier mark ‘yello’ and the contested sign’s element ‘yellow’ convey, at least for a part of the public, the same meaning, namely the colour between green and orange in the spectrum of visible light. In addition, the English-speaking public in the relevant territory will attribute a meaning to the element ‘booster’ of the contested sign. As the element ‘booster’ is not distinctive for the relevant goods and services, the signs are conceptually highly similar because of the common concept of the colour ‘yellow’ that they convey for a part of the public.

For the rest of the public, who will not see any meaning in the term ‘yello’, the signs are not conceptually similar.

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 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 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

Likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That assessment implies some interdependence between the relevant factors, and in particular a similarity between the signs and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the signs, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18, 19).

The goods and services are identical or similar to varying degrees. The degree of attention will vary between average and high.

The inherent distinctive character of the earlier trade mark is average. From the visual and aural perspectives, the signs have a high degree of similarity. From a conceptual perspective, a major part of the English-speaking public will associate the term ‘yello’ of the earlier mark with the colour between green and orange in the spectrum of visible light. For this part of the public, the marks are also conceptually highly similar.

On account of the visual, aural and – for a part of the public – conceptual similarity of the components ‘yello’ and ‘yellow’, there is a likelihood of confusion on the part of the public. The earlier mark is included in its entirety in the first and most distinctive element of the contested sign and has therefore a greater impact than the non-distinctive word ‘booster’ of the contested sign.

Considering the above, there is a likelihood of confusion on the part of the English-speaking part of the public, even if the degree of attention of the relevant public will be high for some of the goods in question. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 404 057. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier trade mark No 6 404 057 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, it must bear the opposition fee as well as the costs incurred by the opponent 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 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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Julie GOUTARD

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.