OPPOSITION No B 2 746 645

Gelbe Seiten Zeichen-GbR, Wiesenhüttenstr. 18, 60329 Frankfurt, Germany (opponent), represented by Bird & Bird LLP, Maximiliansplatz 22, 80333 München, Germany (professional representative)

a g a i n s t

Michele Lombardini, Piazza Unità D'italia 61/2, 42017 Novellara, Italy (applicant), represented by Antonio Dimichele, Pecchioni 10, 43100 Parma, Italy (professional representative).

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 746 645 is upheld for all the contested services.

2.        European Union trade mark application No 15 389 539 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 389 539. The opposition is based on German trade mark registration No 30 611 059. 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.

1. The services

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

Class 38: Communication and telecommunication services; Communication by mobile phones; Communications by telex; Communication by connected to telecommunication networks electronic computer terminals, databases and Internet; Communications by telegraph; Communications by telephone; Communications by facsimile; paging; Communications by teleconferencing; Television broadcasts; Cable television broadcasting; Broadcasts; Services of a press and information agency; other message transmission services; Rental of telephones, fax and other communication devices; Transmitting a commercial website; Radio and television programming and distribution services via the Internet; electronic communications; Providing a computer access to & quot; bulletin boards & quot; (Information and ad billboards) and real-time chat forums; Transmission of messages and images via computer; Low foreign sites on the Internet; Providing access to personal and business shopping and ordering services via computer and / or interactive communications technologies; Telecommunication of information (including web pages), computer programs and other data; Services of electronic mail shipments; Granting users access to the Internet; Providing telecommunications connections to the Internet or data bases; Providing access to digital music web sites on the Internet; Providing access to MP3 websites on the Internet; Delivery of digital music by telecommunications; Operating search engines; Radio and television broadcasting of sports and sporting events; Operation of chat rooms on the Internet; Information about telecommunications and telecommunications subscribers by electronic and printed business directories.

The contested services are the following:

Class 38: Telecommunication services; Telephone and mobile telephone services; Electronic news agency services; Computer communication and Internet access; Data communication by electronic means; Communication of data by means of telecommunications; Communication of information by electronic means; Communication of information by satellite; Communication by electronic means; Electronic network communications; Information, consultancy and advisory services relating to telecommunications; Consultancy services relating to data communications; Electronic communications consultancy; Telecommunications consultancy; Communication network consultancy.

Telecommunication services; telephone and mobile telephone services; internet access; communication by electronic means are identically contained in both lists of services (including synonyms and albeit using slightly different wordings).

The contested electronic news agency services overlap with the opponent’s services of a press and information agency. Therefore, they are identical.

The contested computer communication; communication of data by means of telecommunications; electronic network communications are included in the broad category of the opponent’s communication by connected to telecommunication networks electronic computer terminals, databases and internet. Therefore, they are identical.

The contested data communication by electronic means; communication of information by electronic means are included in the broad category of the opponent’s electronic communications. Therefore, they are identical.

A ‘communication satellite’ is an artificial satellite that relays and amplifies radio telecommunications signals via a transponder; it creates a communication channel between a source transmitter and a receiver at different locations on Earth. Therefore, the contested communication of information by satellite includes, as a broader category, the opponent’s television broadcasts. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested information, consultancy and advisory services relating to telecommunications; telecommunications consultancy include, as broader categories, the opponent’s information about telecommunications. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested consultancy services relating to data communications; electronic communications consultancy; communication network consultancy are included in the opponent’s communication services and are thus identical.

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 services found to be identical 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 price, specialised nature, or terms and conditions of the purchased services.

3. The signs

Yellow
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 element ‘YELLOW’ that the signs have in common will be understood as the colour by the public in the relevant territory, taking into account that it is a very basic English word. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

The figurative element in the contested sign will be perceived as a memory card, namely a SIM card, by way of the characteristic form of said card and the addition of the letters ‘SIM’. In essence, a SIM card is a smart card inside a mobile phone, carrying an identification number unique to the owner, storing personal data, and preventing operation if removed. Bearing in mind that the relevant services all relate to telecommunications in general, this element is weak for these services.

The contested sign has no elements that could be considered clearly more dominant than other elements. The opponent claims that the dominant element of the contested sign is ‘YELLOW’, because it is not a German word and because the figurative element, consisting of a SIM card, is descriptive. However, it is the practice of the Office to restrict the notion of dominance to the visual impact of the elements of a sign, that is, to use it exclusively to mean ‘visually outstanding’ and to leave any other considerations for the overall assessment. As a result, the Office’s practice is that the dominant character of a component of a sign is mainly determined by its position, size, dimensions and/or use of colours, to the extent that they affect its visual impact. Consequently, the fact that a component of a mark may or may not be considered non-distinctive (or as having a low degree of distinctiveness) has no bearing on the assessment of dominant character.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the element ‘YELLOW’, which is the entire earlier mark and the first element in the contested sign. However, they differ in the figurative element of the contested sign consisting of a black smart card containing the letters ‘SIM’, which is weak for the relevant services.  

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛YELLOW’, present identically in both signs. The pronunciation differs in the sound of the element ‛SIM’ of the contested sign, which will be pronounced as one single syllable.

Therefore, as the signs have an identical pronunciation as regards their beginnings and only differ in the second element of the contested sign, namely in one syllable, they are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually highly 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 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

As it has been found in the previous sections of the present decision, the conflicting services are identical, the relevant public has a degree of attention that varies from average to high, and the distinctiveness of the earlier mark is normal.

The signs are, from the visual, aural and conceptual perspectives, highly similar. The earlier mark, ‘YELLOW’, is entirely reproduced at the beginning of the contested sign. As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T-519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T-260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T-179/11, Seven Summits, EU:T:2012:254, § 26). Furthermore, the differing element between the signs is weak for the services in question and, above all, it is undoubtedly identified as a SIM card that cannot be perceived as an indication of origin by the relevant public.

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.

Indeed, 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In the present case, the relevant consumer may regard the contested services and the opponent’s services as belonging to two ranges of services coming, nonetheless, from the same undertaking.

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 German trade mark registration No 30 611 059. It follows that the contested trade mark must be rejected for all the contested services.

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

Vanessa PAGE

Marta GARCÍA COLLADO

Richard BIANCHI

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.