OPPOSITION No B 2 838 491

E-Plus Mobilfunk GmbH, E-Plus-Str. 1, 40472 Düsseldorf, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

Nordnet (Société anonyme), 111, rue de Croix, 59510, Hem, France (applicant), represented by Montesquieu Avocats, 14, rue du Vieux Faubourg CS 50012, 59042, Lille Cedex, France (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 838 491 is upheld for all the contested goods and services, namely

Class 9: Computing apparatus and equipment (namely information and data processing apparatus and equipment); Apparatus for telecommunications and electronic communications; Computer software; Computer programs; Electronic publications, downloadable.

Class 35: Advertising; Advertising on telecommunications networks; Business and advertising information available online or on the internet; Business management and administration; Computerised file management; Rental of computer files; Services in relation to the updating of information on computer databases; Data searches in computerised files for others; Web site traffic optimisation; Administrative and business management of domain names; Referencing of websites and domain names; Arranging of telecommunications subscriptions for others; Dissemination of advertising matter; Distribution of advertising materials.

Class 38: Telecommunications; Electronic communications; Electronic mail; Redirection of electronic mail and domain names; Providing access to databases; Providing of access to public or private telecommunications networks; Distribution and relaying of telecommunications and information signals via digital and/or analogue wireless or cable networks; Rental of telecommunications apparatus and installations; Rental of access time and traffic to global computer networks; Information about telecommunications; Consultancy, advisory and information services in relation to telecommunication; Providing of access to information held on databases; Rental of access time to a database server for global communications networks (internet).

Class 42: Design and development of applications in the field of computing (in particular computer programs) and telecommunications; Computer software design; Computer programming; Installation, maintenance, updating and rental of computer software; Referencing and optimisation of websites on search engines on the internet telecommunications network; Hosting of computer sites (websites and applications) with open or restricted access, whether private or public; Design, creation, and maintenance of websites for others; Rental and maintenance of computer servers; Rental of backup spaces; Protection against viruses and computer attacks; Computer security services; Information technology for controlling and managing internet access; Data conversion of computer programs and data [not physical conversion]; Conversion of data or documents from physical to electronic media; Computer system monitoring services; Electronic data storage; Computer security and surveillance.

2. European Union trade mark application No 15 372 91515 372 915 is rejected for all the contested goods and services. It may proceed for the remaining services.

3. The applicant 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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. 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 some of the goods and services of European Union trade mark application No 15 372 915 for the figurative mark15 372 915 , namely against all the goods and services in Classes 9, 35, 38 and 42. The opposition is based on, inter alia, German trade mark registration No 302 015 061 444 for the word mark ‘E-Plus’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 German trade mark registration No 302 015 061 444.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission and reproduction of sound and images, magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; abacuses; accounting machines; galvanic cells; acid hydrometers; acidometers for batteries; acoustic conduits; acoustic couplers; acidometers; adding machines; antennas; aerometers; electronic agendas; air analysis apparatus; alarm bells, electric; alarms; alcoholmeters; alidades; altimeters; ammeters; audio amplifiers; amplifying tubes; anemometers; animated cartoons; anode batteries; anodes,· answering machines; anti-glare glasses; anti-glare visors; ant interference devices [electricity]; burglar alarms; anticathodes; aerometers [optics]; armatures [electricity]; asbestos clothing for protection against fire; asbestos gloves for protection against accidents; asbestos screens for firemen; apparatus and instruments for astronomy; audiovisual teaching apparatus; automated teller machines [A TM]; azimuth instruments; balances [steelyards]; balancing apparatus; bar code readers; barometers; electric batteries for vehicles; batteries for lighting; battery boxes; chargers for electric batteries; battery jars; beacons, luminous; warning bells; betatrons; binoculars; signals (flashing lights); blueprint apparatus; boiler control instruments; branch boxes [electricity]; breathing apparatus, except for artificial respiration; breathing apparatus tor underwater swimming; buzzers; cabinets for loudspeakers; electric wires; circular slide rules; calculators; calibrating rings; calliper rules; camcorders; cameras; condensers [capacitors]; capillary tubes; carpenters' rules; carriers for dark plates [photography}; special cases for photographic apparatus; cases fitted with dissecting instruments [microscopy]; cash registers; cassette players; cathodes; cathodic anti-corrosion apparatus; cell phone straps; centering apparatus for photographic transparencies; processors [central processing units]; chemical apparatus and instruments, chips [integrated circuits]; inductors; chromatography apparatus for laboratory use; chronographs [time recording apparatus]; film cameras; cinematographic film, exposed; telerupters; circuit closers; cleaning apparatus for sound recording discs; slope indicators; clothing especially made for laboratories; clothing for protection against accidents, irradiation and fire; clothing for protection against fire; coaxial cables; coils, electric; coin-operated mechanisms; coin-operated mechanisms for television sets; collectors, electric; electric apparatus for commutation; commutators; compact disc players; compact discs [audio-video]; compact discs [read-only memory]; comparators; directional compasses; games software; computer keyboards; computer memory devices; recorded computer software; peripherals adapted for use with computers; recorded computer software; computer programs [downloadable software]; computers; electric conductors; connections for electric lines; electric couplings; contact lenses; contacts, electric; containers for contact lenses; containers for microscope slides; control panels [electricity],converters, electric; copper wire, insulated; correcting lenses [optics]; cosmographic instruments; mechanisms for counter-operated apparatus; couplers {data processing equipment]; covers for electric outlets; crash test dummies; melting pots; current rectifiers; cyclotrons; darkroom lamps [photography]; darkrooms [photography]; data processing apparatus; decompression chambers; demagnetizing apparatus for magnetic tapes; densimeters; densitometers; detectors: diagnostic apparatus, not for medical purposes; diaphragms [acoustics]; diaphragms for scientific apparatus; diaphragms [photography]; dictating machines; diffraction apparatus [microscopy]; discharge tubes, electric, other than for lighting; disk drives for computers; disks, magnetic; distance measuring apparatus; distance recording apparatus; distillation apparatus for scientific purposes; panels for the distribution of electricity; distribution boxes [electricity]; distribution consoles [electricity]; divers' masks; diving suits; DNA chips; dog whistles; dosage dispensers; downloadable music files; downloadable ring tones for mobile phones; drainers for use in photography; dressmakers' measures; drying apparatus for photographic prints; drying racks [photography]; ducts [electricity], DVD players; dynamometers; ear plugs for divers; editing appliances for cinematographic films; egg-candlers; electric door bells; electric installations for the remote control of industrial operations; electric loss indicators; ducting for electric cables; materials for electricity mains [wires, cables]; electrified fences; electrified rails for mounting spot lights; electro-dynamic apparatus for the remote control of railway points; electro-dynamic apparatus for the remote control of signals; electrolysers; electromagnetic coils; electronic indicator boards; electronic pens; electronic pocket translators; downloadable electronic publications; electronic tags for goods; encoded identification bracelets, magnetic; encoded magnetic cards; enlarging apparatus [photography]; epidiascopes; ergometers; photometers; fire extinguishers; spectacle cases; spectacle chains; eyeglass cords; spectacle frames; eyepieces; instruments containing eyepieces; facsimile machines, counterfeit [false] coin detectors; apparatus for fermentation [laboratory apparatus]; fiber optic cables; film cutting apparatus; films, exposed; filters for respiratory masks; filters for ultraviolet rays, for photography; filters [photography]; fire alarms; fire beaters; fire blankets; fire boats; fire pumps; fire escapes; fire hose; fire hose nozzles; flash/amps for cameras; flash/amps for cameras; diskettes; fluorescent screens; fog signals, non-explosive; food analysis apparatus; frames for photographic transparencies; apparatus to check franking; frequency meters; furniture especially made for laboratories; fuse wires; fuses; galena crystals [detectors]; galvanometers; apparatus for analysing gases; gasometers [measuring instruments]; gauges; glass covered with an electrical conductor; glazing apparatus for photographic prints; global Positioning System GPSJ apparatus; gloves for divers; gloves for protection against accidents; gloves for protection against X-rays for industrial purposes; sports glasses; grids for batteries; hands free kits for phones; head cleaning tapes [recording]; headphones; heat regulating apparatus; heliographic apparatus; hemline markers; high-frequency apparatus; holders for electric coils; holograms; horns for loudspeakers; egg timers [sandglasses]; hydrometers; hygrometers; identification sheaths for electric wires; identification threads for electric wires; Identity cards, magnetic; igniting apparatus, electric, for igniting at a distance; incubators for bacteria culture; inductors [electricity]; smart cards [integrated circuit cards]; integrated circuits: intercommunication apparatus; interfaces for computers; inverters [electricity], invoicing machines; ionisation apparatus, not for the treatment of air or water; jigs [measuring instruments]; juke boxes for computers; coin-operated musical automata [juke boxes]; junction boxes [electricity]; junction sleeves for electric cables; knee-pads for workers; laboratory centrifuges; laboratory trays; lactometers; laptop computers; lasers, not for medical purposes; apparatus for measuring the thickness of skins; close-up lenses; lenses for astrophotography; letter scales; levelling instruments; bubble levels; life vests; safety nets; life-saving apparatus and equipment, life-saving rafts; optical fibers; light dimmers [regulators], electric; light-emitting diodes [LEO]; light-emitting electronic pointers; lighting ballasts; lightning conductors [rods]; limiters electricity]; electronic locks; logs [measuring instruments]; loudspeakers; magic lanterns; magnetic data media; magnetic encoders; magnetic tape units for computers; magnetic tapes; magnetic wires; decorative magnets; magnifying glasses; pressure measuring apparatus; marine compasses; marine depth finders; marker buoys; marking gauges [joinery]; masts for wireless aerials; material testing instruments and machines; mathematical instruments; measures; measuring instruments; measuring devices, electric; measuring glassware; measuring spoons; mechanical signs; megaphones; mercury levels; metal detectors for industrial or military purposes; meteorological balloons; meteorological instruments; meters; metronomes; micrometre screws for optical instruments; micrometers; microphones; microprocessors; microscopes; microtomes; kilometre recorders for vehicles; mirrors tor inspecting work; mirrors [optics]; modems; money counting and sorting machines; mains monitoring apparatus (electric) monitors [computer hardware], monitors [computer programs]; mice (data processing equipment); mouse pads; nautical apparatus and instruments; naval signalling apparatus; navigation apparatus for vehicles [on-board computers]; navigational instruments; neon signs; nets for protection against accidents; nose clips for divers and swimmers; objectives [lenses] [optics]; observation instruments; octants; ohmmeters; optical apparatus and instruments; optical character readers; optical condensers; optical data media; optical discs; optical glass; opticians goods; optical lamps; optical lenses; oscillographs; furnaces for laboratory use; oxygen transvasing apparatus; ozonisers [ozonators]; parking meters; particle accelerators; pedometers; peepholes [magnifying lenses] for doors; periscopes; personal stereos; petrol gauges; sound recording discs; photocopiers; phototelegraphy apparatus; photovoltaic cells; physical apparatus and instruments; spectacles [optics]; pipettes; plane tables [surveying instruments]; planimeters; plates for batteries; plotters; sockets, plugs and other contacts [electric connections]; plumb bobs; pocket cin partualculators; polarimeters; wearable portable media players; cell phones; precision balances; precision measuring apparatus; pressure indicator plugs for valves; pressure indicators; prisms [optics]; probes for scientific purposes; projection apparatus; projection screens; protection devices against X-rays, not for medical purposes; protection devices for personal use against accidents; head protection; protective helmets for sports; protection masks; protective suits for aviators; protractors [measuring instruments]; punched card machines for offices; push buttons for bells; pyrometers; quantity indicators; radar apparatus; radio pagers; radiological apparatus for industrial purposes; radiology screens for industrial purposes; radios; radiotelegraphy sets; radiotelephony sets; railway traffic safety appliances; readers [data processing equipment]; audio-video receivers; apparatus for changing record player needles; record players; cell switches [electricity]; reflecting discs for wear, for the prevention of traffic accidents; refractometers; refractors; regulating apparatus, electric; relays, electric; remote control apparatus; resistances, electric; respirators for filtering air; respiratory masks, other than for artificial respiration; resuscitation mannequins [teaching apparatus]; retorts; retorts stands; revolution counters; rheostats; riding helmets; road signs, luminous or mechanical; rods for water diviners; levelling staffs [surveying instruments]; rules [measuring instruments]; saccharometers; safety restraints, other than for vehicle seats and sports equipment; safety tarpaulins; salinometers; satellite navigational apparatus; satellites for scientific purposes; scanners [data processing equipment]; screens for photoengraving; screens [photography]; screw-tapping gauges; semi-conductors; sextants; sheaths for electric cables; shoes for protection against accidents, irradiation and fire; shutter releases; telescopic sights for firearms; signal bells; signal lanterns; signalling panels. luminous or mechanical; signalling whistles; signals, luminous or mechanical; luminous signs; simulators for the steering and control of vehicles; sirens; slide projectors; slide-rules; transparencies [photography]; smoke detectors; socks, electrically heated; solar batteries; solderers helmets; solenoid valves [electromagnetic switches]; sonars; sound alarms; sound locating instruments; sound recording apparatus; sound recording carriers; sound recording strips; sound reproduction apparatus; sound transmitting apparatus; sounding apparatus and machines; sounding leads; sounding lines; spark-guards; speaking tubes; spectacle lenses; spectacles [optics]; spectrograph apparatus; spectroscopes; speed checking apparatus for vehicles; speed indicators; speed measuring apparatus [photography]; speed regulators for record players; spherometers; spools [photography]; sprinkler systems for fire protection; stage lighting regulators; stands for photographic apparatus; starler cables for motors; steering apparatus, automatic, for vehicles; step-up transformers; stereoscopes; stereoscopic apparatus; stills for laboratory experiments,· needles for record players; sulfitometers; sunglasses; surveying apparatus and instruments; surveying chains; surveying instruments; switchboards; switchboxes [electricity]; switches, electric; tachometers; tape recorders; taximeters; teaching apparatus; teeth protectors; telegraph wires; telegraphs [apparatus]; range finders; telephone apparatus; telephone receivers; telephone transmitters; telephone wires; teleprompters; telescopes; TV sets; temperature indicators; terminals [electricity]; test tubes; testing apparatus not for medical purposes; theft prevention installations, electric; theodolites; electron tubes; thermometers, not for medical purposes; thermostats; thermostats for vehicles; ticket dispensers; time clocks [time recording devices]; time recording apparatus; time switches, automatic; automatic indicators of low pressure in vehicle tires [tyres]; tone arms for record players; totalizators, traffic-light apparatus [signalling devices]; transformers [electricity], transistors [electronic]; transmitters of electronic signals; transmitters [telecommunication]; transponders; triodes; urinometers; USB flash drives; vacuum gauges; vacuum tubes [radio]; variometers; vehicle breakdown warning triangles; vehicle radios; bullet-proof waistcoats [vests (Am.)]; video cassettes; video game cartridges; video recorders; video screens; video telephones; viewfinders, photographic; viscosimeters; voltage regulators for vehicles; voltage surge protectors; voltmeters; voting machines; silicon wafers; thread counters; walkie-talkies; washing trays [photography]; water level indicators; wavemeters; weight measuring instruments; weighing apparatus and instruments; weights; whistle alarms; wind socks for indicating wind direction; wire connectors [electricity]; word processing apparatus; workmen's protective face-shields; wrist rests for use with computers; X-ray apparatus not for medical purposes; X-ray films, exposed; X-ray photographs, other than for medical purposes; X-ray tubes not for medical purposes; apparatus and installations for the production of X-rays, not for medical purposes; apparatus for sound or images transmission; telecommunications equipment; mobile telecommunication apparatus; mobile telecommunications handsets; digital communication apparatus and instruments; digital tablets; computer hardware; computer application software; computer software downloadable from the Internet; software applications; mobile software application; downloadable applications for multimedia devices; computer games; personal digital assistants (PDAs); pocket PC's; telecommunication network apparatus; driver software for telecommunications networks and for telecommunications apparatus; safety clothing; computer software recorded onto CD Rom; SO-Cards; optical glasses; goggles and cases therefor; photographic lenses; MP3 players; audio tapes, audio cassettes,· audio discs; audio-video tapes; audio-video cassettes; (audio-video) discs; video discs; CDs DVDs cell phone covers; mobile telephone cases; encoded magnetic cards; encoded cards; application software for mobile phones; computer software for telecommunications; software for the processing of financial transactions; security alarms; security cameras; security warning apparatus; security control apparatus; security surveillance apparatus; computer software for security purposes; computer software for insurance purposes; parts and components of all aforementioned goods.

Class 35: Advertising; business management; business administration: office functions; business auditing; drawing up of statements of accounts; administrative order processing; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; auctioneering services; bill-posting; business appraisal; business consulting; business information; business inquiries; business investigations; business management and organization consultancy; business management assistance; business management consultancy and advisory services; business management of performing artists; business management of sports people; business organisation consulting; business research; commercial administration of the licensing of the goods and services of others; commercial information agencies; commercial information and advice for consumers [consumer advice shop]; commercial or industrial management assistance; compilation of information into computer databases; compilation of statistics; cost price analysis; data search in computer files for others; economic forecasting; efficiency experts; employment agencies; computerised file management; import-export agencies; invoicing; advisory services for business management; office machines and equipment rental; opinion polling services; outsourcing services [business assistance]; payroll preparation; personnel management consulting; personnel recruitment; photocopying services; price comparison services; procurement services for others [purchasing goods and services for other businesses]; personnel selection using psychological testing; public relations services; relocation services for businesses; rental of advertising space; rental of advertising time on communication media; rental of photocopying machines; rental of vending machines; sales promotion for others; secretarial services; shop window dressing; shorthand; sponsorship search; systemization of information into computer databases; tax preparation; telephone answering for unavailable subscribers; transcription of communications [office functions]; typing; word processing; organisation, operation and supervision of loyalty and incentive schemes; arranging of competitions for advertising purposes; retailing services and on-line retail store services relating to scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission and reproduction of sound and images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computers, computer software, fire-extinguishing apparatus, apparatus for sound or images transmission, telecommunications equipment, mobile telecommunication devices, mobile communication handsets, digital apparatus and instruments, digital tablets, computer hardware, application software for computers, computer software, computer software downloadable from the Internet, recorded computer software, software applications, mobile software applications, downloadable applications for multimedia devices, computer games, games software, computer game programmes, personal digital assistants (PDAs); pocket PC's, cell phones, laptop computers, telecommunication network apparatus, driver software for telecommunications networks and for telecommunications apparatus, safety clothing, protective helmets, televisions, headphones, global Positioning System [GPS] apparatus, satellite navigational apparatus, computer software recorded onto CD Rom, SO-Cards, optical glasses, spectacle lenses, sunglasses, goggles and cases therefor, contact lenses, cameras, camera lenses, MP3 players, audio tapes, audio cassettes, audio discs, audio-video tapes, audio-video cassettes, (audio-video) discs, videotapes, video cassettes, videodiscs, CDs, DVDs, downloadable electronic publications, mouse pads, magnets, cell phone covers, cases adapted for mobile phones, encoded magnetic cards, encoded cards, application software for mobile phones, software for telecommunications, software for the processing of financial transactions, security alarms, security cameras, security warning apparatus, security control apparatus, security surveillance apparatus, computer software for security purposes, computer software for insurance purposes, paper, cardboard, printed matter, bookbinding material, photographs [printed, stationery, adhesives for stationery or household purposes, artists] materials, paint brushes, typewriters and office requisites, instructional matter and teaching aids, plastic material for packaging, printers' type, printing blocks, arts, crafts and modelling equipment, pictures, portraits, paintings, drawings, figurines of paper and cardboard, drawing instruments, drawing materials, modelling materials, packing bags of paper, packaging materials, packaging materials made of paper, packaging materials made of card, packaging materials made of cardboard, wrapping materials made of card, wrapping materials made of cardboard, wrapping materials made of paper, wrapping materials made of plastic, modelling materials made of plastic, correcting and erasing implements, teaching material, printing components, photograph albums, writing implements, writing instruments, stationery, writing or drawing books, writing pads, writing paper, stamping implements, books, catalogues, cards, manuals for instructional purposes, magazines, mail order catalogues, newspapers, brochures, periodicals, calendars, transfers, personal organisers, gift cards, gift vouchers, labels, maps, printed publications, thesauri (books), dictionaries, personal organisers, stamps, postcards, posters, diaries, paper and cardboard for industrial purposes, banknote clips of precious metal, disposable paper products, absorbent paper, toilet paper, bibs of paper, coasters of paper or cardboard, paper tissues, paper towels, toilet paper, kitchen rolls [paper], napkins of paper, tablecloths made of paper, table mats made of paper, place mats of paper, toilet paper, toilet rolls, printed tariffs, cards for use in connection with sales and of promotional voucher schemes and promotional services, forms, printed, discount tickets, adhesive tapes for stationery or household purposes, gift cartons, gift bags, photo print paper, clothing, footwear, headgear, household or kitchen utensils and containers, jewellery, ornaments jewellery, precious stones, watches and chronometric instruments, musical instruments, lighting apparatus, textiles and textile goods, leather and imitations of leather, handbags, rucksacks, wallets, bags and sports bags, travelling bags, backpacks, duffle bags, bags for footwear, holdalls, purses, wallets, credit card cases, games and toys, gymnastic and sporting articles, meat, fish, poultry, game, coffee, tea, cocoa, sugar, rice, beers, mineral waters, mineral and aerated waters and other non-alcoholic drinks, alcoholic beverages, matches; retailing services and on-line retail store services relating to telecommunication products, clothing stores, garden markets; retail services and online retail services relating to foodstuffs, white goods, electric household and electronic household goods; employment consultancy; providing employment information; information and advice relating to all the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet.

Class 38: Telecommunications; communications by cellular phones; communications by computer terminals; communications by fiber optic networks; telegraph services; telephone and mobile telephone services; computer aided transmission of messages and images; electronic bulletin board services [telecommunications services]; electronic mail; message sending; providing telecommunications connections to a global computer network; providing user access to global computer networks; satellite transmission; telecommunications routing and junction services; telecommunication services; mobile telecommunications services; telecommunication gateway services; Internet portal services; mobile telecommunication network services; fixed line telecommunication services; provision of broadband telecommunications access; broadband services; wireless communications services ; digital communications services Internet access services; email and text messaging service; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; communications for access to a database; operation of a network, being telecommunication services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network.

Class 42: Technical support services relating to telecommunications and apparatus; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; analysis for oil-field exploitation; architectural consultation; architecture; authenticating works of art; bacteriological research; biological research; calibration [measuring]; chemical analysis; chemical research; chemist services; cloud seeding, computer programming; computer rental; advisory services relating to computer programming; computer software design; updating of computer software; computer system analysis; computer system design; computer virus protection services; construction drafting; consultancy in the design and development of computer hardware; consultancy in the field of energy-saving; conversion of data or documents from physical to electronic media; cosmetic research; creating and maintaining web sites for others; data conversion of computer programs and data [not physical conversion]; design of interior decor; digitizing (scanning) of documents; fashion design; duplicating computer programs; engineering services; quality evaluation of wool; geological prospecting; geological surveys; graphic art design, handwriting analysis [graphology]; hosting web sites; industrial design; installation of software; scientific laboratory services; land surveying; maintenance of software; textile testing; mechanical research; monitoring of computer systems by remote access; oil-field surveys; oil prospecting; oil-well testing; packaging design; physics [research]; technical project studies; providing search engines for the internet; provision of scientific information, advice and consultancy in relation to carbon offsetting," quality control; recovery of computer data; rental of software; rental of web servers; research and development of new products for others; research in the field of environmental protection; styling [industrial design]; surveying; technical research; underwater exploration; urban planning; quality evaluation of standing timber; vehicle roadworthiness testing; water analysis; meteorological information; IT services; services of a programmer; consultancy in the field of computer hardware; application service provider (ASP): data conversion of computer programs and data; website hosting; creating and maintaining blogs for others, services of engineers; expert advice and expert opinion relating to technology; rental of data processing apparatus and computers; technical services relating to projection and planning of equipment for telecommunications; services of information brokers and providers, namely product research services for others; research in the field of telecommunication technology, monitoring of network systems in the field of telecommunications; technical support services relating to telecommunications and apparatus; data security services; data security services [firewalls]; research relating to security; computer security system monitoring services; maintenance of computer software relating to computer security and prevention of computer risks; updating of computer software relating to computer security and prevention of computer risks; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network.

The contested goods and services are the following:

Class 9: Computing apparatus and equipment (namely information and data processing apparatus and equipment); Apparatus for telecommunications and electronic communications; Computer software; Computer programs; Electronic publications, downloadable.

Class 35: Advertising; Advertising on telecommunications networks; Business and advertising information available online or on the internet; Business management and administration; Computerised file management; Rental of computer files; Services in relation to the updating of information on computer databases; Data searches in computerised files for others; Web site traffic optimisation; Administrative and business management of domain names; Referencing of websites and domain names; Arranging of telecommunications subscriptions for others; Dissemination of advertising matter; Distribution of advertising materials.

Class 38: Telecommunications; Electronic communications; Electronic mail; Redirection of electronic mail and domain names; Providing access to databases; Providing of access to public or private telecommunications networks; Distribution and relaying of telecommunications and information signals via digital and/or analogue wireless or cable networks; Rental of telecommunications apparatus and installations; Rental of access time and traffic to global computer networks; Information about telecommunications; Consultancy, advisory and information services in relation to telecommunication; Providing of access to information held on databases; Rental of access time to a database server for global communications networks (internet).

Class 42: Design and development of applications in the field of computing (in particular computer programs) and telecommunications; Computer software design; Computer programming; Installation, maintenance, updating and rental of computer software; Referencing and optimisation of websites on search engines on the internet telecommunications network; Hosting of computer sites (websites and applications) with open or restricted access, whether private or public; Design, creation, and maintenance of websites for others; Rental and maintenance of computer servers; Rental of backup spaces; Protection against viruses and computer attacks; Computer security services; Information technology for controlling and managing internet access; Data conversion of computer programs and data [not physical conversion]; Conversion of data or documents from physical to electronic media; Computer system monitoring services; Electronic data storage; Computer security and surveillance.

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.

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 ‘in particular’, used in the applicant’s list of services of Class 42 and the opponent’s list of services of Class 38, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services of Classes 9 and 42 and the opponent’s’ list of services of Classes 38 and 42 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.

Contested goods in Class 9

Computing apparatus and equipment (namely information and data processing apparatus and equipment); Apparatus for telecommunications; Computer software; Computer programs; Electronic publications, downloadable are identically contained in both lists of services (including synonyms).

The contested Apparatus for electronic communications are included in the broad category of, or overlap with, the opponent’s telecommunications equipment. Therefore, they are identical.

Contested services in Class 35

Advertising; Business management and administration; Computerised file management; Data searches in computerised files for others; Arranging of telecommunications subscriptions for others are identically contained in both lists of services (including synonyms).

The contested Advertising on telecommunications networks; advertising information available online or on the internet; Dissemination of advertising matter; Distribution of advertising materials are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested Business information available online or on the internet is included in the broad category of the opponent’s Business information. Therefore, they are identical.

The contested Administrative and business management of domain names are included in the broad categories of, or overlap with, the opponent’s Business management; Business administration. Therefore, they are identical.

The contested services in relation to the updating of information on computer databases overlap with the opponent’s compilation of information into computer databases; systemization of information into computer databases. Therefore, they are identical.

The contested web site traffic optimisation (consists of services to improve the visibility of a website or a web page in search engines); referencing of websites and domain names are at least similar to the opponent’s advertising since they have the same purpose (to promote a company’s business activities), they target the same relevant public and can often be provided by the same undertakings. Furthermore, they are complementary.

The contested Rental of computer files is similar to a low degree to the opponent’s computerised file management as they may be provided by the same undertakings to the same public.

Contested services in Class 38

Telecommunications; electronic mail are identically contained in both lists of services (including synonyms).

The contested Providing of access to public or private telecommunications networks overlaps with the opponent’s providing user access to global computer networks. Therefore, they are identical.

The contested Electronic communications; Redirection of electronic mail and domain names; Distribution and relaying of telecommunications and information signals via digital and/or analogue wireless or cable networks; Rental of telecommunications apparatus and installations are included in the broad categories of, or overlap with, the opponent’s telecommunications services; providing telecommunications connections to a global computer network. Therefore, they are identical.

The contested Information about telecommunications include, as a broader category the opponent’s information services provided by means of telecommunication networks relating to telecommunications;. 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 advisory and information services in relation to telecommunication include, as a broader category the opponent’s information and advisory services relating to the aforesaid services provided over a telecommunications network [Telecommunications]. 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 Consultancy services in relation to telecommunication overlaps with the opponent’s information services provided by means of telecommunication networks relating to telecommunications. Therefore, they are identical.

The contested providing access to databases; Rental of access time and traffic to global computer networks; providing of access to information held on databases; rental of access time to a database server for global communications networks (internet) overlap with the opponent’s services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; Providing user access to global computer networks; provision of broadband telecommunications access; digital communications services Internet access services. Therefore, since these broad categories of services cannot be clearly separated, they are considered identical.

Contested services in Class 42

Design and development of applications in the field of computing (in particular computer programs); Computer software design; Computer programming; Installation, maintenance, updating and rental of computer software; Design, creation, and maintenance of websites for others; Rental of computer servers; Protection against viruses; Data conversion of computer programs and data [not physical conversion]; Conversion of data or documents from physical to electronic media are identically contained in both lists of services (including synonyms).

The contested Design and development of applications in the field of telecommunications overlaps with the opponent’s design and development of computer hardware and software. Therefore, they are identical.

The contested Hosting of computer sites (websites and applications) with open or restricted access, whether private or public overlap with the opponent’s hosting web sites. Therefore, they are identical.

The contested Computer security services; Computer system monitoring services; Computer security include, as broader categories, or overlap with, the opponent’s computer security system monitoring services. 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 Computer surveillance overlaps with the opponent’s computer security system monitoring services. Therefore, they are identical.

The contested Rental of backup spaces; Information technology for controlling and managing internet access; Electronic data storage; maintenance of computer servers are included in the broad category of, or overlap with, the opponent’s IT services. Therefore, they are identical.

The contested Referencing and optimisation of websites on search engines on the internet telecommunications network are included in the broad category of, or overlap with, the opponent’s creating and maintaining web sites for others. Therefore, they are identical.

The contested Protection against computer attacks overlaps with the opponent’s data security services. Therefore, they are 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 goods and services found to be identical and similar to various degrees 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 and services, the frequency of purchase and their price.

3. The signs

E-Plus
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 earlier mark is a word mark consisting of ‘E-Plus’. The contested sign is a figurative mark consisting of the lowercase stylised letter ‘e’ depicted in bold black typeface.

The element ‘e’, included in both signs, may be understood as referring to the concept of ‘electronic’, or to the fact that an action can be performed electronically through the internet or the web. Therefore, for part of the public that will perceive this meaning, it is non-distinctive in relation to the relevant goods and services. However, a part of the public might see it simply as the letter that it represents. In that case, its distinctiveness is deemed to be average. For the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from the perspective of the part of the relevant public that perceives the letter ‘e’ simply as the letter that it represents and therefore this element is distinctive for all the relevant goods and services.

The element ‘plus’ of the earlier mark will convey the idea of ‘something more’ or that the goods and services offer something additional (26/11/2007, R 435/2007-1, PLUS; 16/11/2015, R 2187/2013-2, FILM PLUS / CINE+ et al., § 50, 07/07/2016, R 1685/2015-1, MobiPlus / Plus, § 41). Therefore, this element is rather weak for the goods and services at issue.

The applicant argues that in case of short signs consisting of a single letter the consumer will immediately memorize the differences between the sign and thus small differences can led to a different overall impression. The Opposition Division acknowledges that the contested sign in question is indeed a short sign and the consumer is presumed to perceive small differences between short signs with greater ease than for longer ones. However, this is not the only factor to be taken into account in the comparison of signs, which involves a global assessment of several relevant aspects.

The applicant also argues that the contested mark is a figurative sign composed of a stylised circle and the bottom of the sign represents a smile and, in consequence, the common letter ‘e’ of both signs are dissimilar. The Opposition Division does not share this view. The letter ‘e’ of the contested sign is represented in a slightly stylised way, however, there is no objective reason to consider that it will be perceived as a circle nor the thin line in its bottom part could be perceived as a smile. The contested sign must be considered as a reproduction of a standard lowercase ‘e’ that will be perceived as such without any hesitation. In this case, although the letter in the contested sign is slightly stylised, the Opposition Division considers that it is not sufficiently different to obviate the similarity between this letter of both signs. Therefore, this applicant’s allegation are considered unfounded.

The contested sign does not have any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letter ‘e’, which is distinctive for a part of the public under analysis. In this context, it must be noted that consumers generally tend to focus on the first part 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.

The signs differ in the word ‘PLUS’ and the hyphen included in the earlier mark, and in the stylisation of the letter ‘e’ of the contested sign, which however have a weaker impact for the public, as referred above.

Therefore, taking into account that the signs share the letter ‘e’, which is distinctive for a relevant part of the public under analysis, being the first element of the earlier mark and the sole element of the contested sign, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‛e’, being the only verbal element in the contested sign and the first letter in the earlier mark. The pronunciation differs in the sound of the letters ‛PLUS’ of the earlier mark, which have no counterpart in the contested sign. The Opposition Division does not agree with the applicant’s allegations that the contested sign could be not pronounced. Since the letter ‘e’ in the contested sign is clearly legible, it will be pronounced as such.

Bearing in mind the previous assertions, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content of the signs. Given the coincidence in the common letter ‘e’, which is distinctive for a relevant part of the public, the signs are conceptually similar to a low degree.

The applicant’s allegation that the signs are conceptually dissimilar given that the public will perceive a smile in the letter ‘e’ of the contested sign has to be set aside. There is no reason to assume that a thin line in the bottom part of the letter will be associated with a smile, optimism, dynamism and spontaneity, as claimed by the applicant.

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.

According to the opponent, the earlier trade mark has a reputation in Germany in connection with telecommunications.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 18).

On 29/05/2017 the opponent submitted, in particular, the following evidence:

• Annexes 1 - 2 : Screenshot and extract from Wikipedia entry for E-Plus which states that E-plus had more than 25 million subscribers according to E-plus group annual report in 2013 and that E-Plus is the third largest mobile operator in Germany.

• Annex 3: 9 pages of advertising in German and showing the trade mark in question. (Only 2 pages are dated (01/2002).

• Annexes 4, 6, 20: Screenshots in 2010 from the Internet Wayback Machine (web.archive.org) showing pages which include the signs like but also the earlier trade mark ‘E-Plus’.

• Annex 5: Screenshot dated 06/08/2014 check showing the website eplus.de and the sign

• Annex 7: Article from the online magazine ‘Spiegel online’ in German showing a picture of an E-Plus SIM card dated 26/03/2008.

• Annex 8: Two screenshots from the website myvideo.de showing television advertisement uploaded on 12/03/2005.

• Annex 9: Article from faz.net dated 11/06/2012 in German about a possible merger of the opponent. The article mentions the opponent as 3rd largest mobile telecommunication provider in Germany. Translation of relevant parts provided.

• Annex 10: Article from German internet magazine de.engaget.com dated 03/06/2012 in German with the title ‘KPN und Telefonica denken über Zusammenschluss von O2 und E-Plus nach’ (‘KPN and Telefonica are thinking about a merger of O2 and E-Plus’) which stated that both companies would be market leader in Germany with 41,7 million customers ahead of 36,5 (Vodafone) and 35,1 (Telecom). Part of the article are translated.

• Annex 11: Article in English, published on the website of TeleGeography, on 26/10/2012 with the title ‘Telefonica eyes German network sharing deal’ and makes references to E-Plus in the text.

• Annex 12: Article in German from ‘Frankfurter Rundschau’ dated 03/10/2013 showing a picture of an E-Plus SIM card (with English translation of relevant parts in the opponent’s observation).

• Annex 13: Article in German from the online magazine of the German newspaper ‘Zeit’, www.zeit.de, dated 26/08/2013 (with English translation of relevant parts in the opponent’s observation).

• Annex 14: Extract in German from the online magazine of German television channel ARD, boerse.ard.de, with the title ‘Fusion von E-Plus und O2, Aktionäre machen den Weg frei’ (Merger of E-Plus and O2, Shareholders opened the track’), dated 02/10/2013 (with English translation of relevant parts in the opponent’s observation).

• Annex 15: Article from the German weekly ‘Der Tagesspiegel’, dated 06/08/2013, in German and article from ‘Spiegel Online’, dated 23/07/2013, in German. Both articles make reference to E-Plus (with English translation of relevant parts in the opponent’s memory).

• Annexes 16, 17, 31: Copies of several invoices issued within the period 2008 to 2015. The trade mark ‘E-Plus’ appears in the text, next to some of the items listed in the invoices. The addresses are redacted but show the city or town of the customers and they all refer to Germany. The document is in German, the relevant parts are translated into English.

• Annexes 18,19: Price lists and special conditions valid for contracts as of 15/05/2012 for ‘E-Plus’ mobile telecommunications services.

• Annex 21: Extract from Wikipedia showing a Mini car bearing the sign in white lettering (screenshot taken on 16/04/2008). According to the opponent, the Mini cars, bearing the earlier trade mark, are used by E-Plus Service GmbH & Co. KG as moving means of promotion in Germany.

• Annex 22: Screenshot from the website flickr.com showing a photograph taken on 02/05/2007 which shows a promotional campaign in which the trade mark , in white lettering and against a green background, appears.

• Annex 23: A photograph of shop front showing the sign in green lettering on a white background. This photograph was published according to the opponent on 05/09/2010 and pictures a store located in Saarbrücken, Germany.

• Annex 24: Screenshot from the website flickr.com showing a photograph which shows a large version of the trade mark , in green lettering, attached to a building, which according to the opponent is the exhibition building of the opponent on the international trade fair ‘Cebit’ in Hannover, Germany in 2005. On the right side of the photo appears ‘e-plus at Cebit 2005.

• Annex 25: Screenshot dated 07/08/2014 from the opponent’s website eplus-gruppe.de.

• Annex 26: A printout of the ‘About us’ section of the website eplus-gruppe.de dated 01/10/2012. The information published there is in English.

• Annex 27: A printout of the opponent’s profile from the social networking site xing.com dated 01/10/2012 showing the sign ‘E-Plus Gruppe” stating that ‘E-Plus Group is the contender in the German market for mobile telecommunication services, more than 23.1 million customers phone, send messages and surf the Internet within the net of the trademark group.’

• Annex 28: A copy of press releases issued by the opponent dated on 25/09/2012 showing the sign E-Plus Gruppe, while the sign ‘E-Plus’ is also mentioned in the text. All documents are in German.

• Annex 29: Undated brochure showing i.a. ‘E-Plus’ in German. Brochures called ‘Pluspunkte’, from February 2011, January 2012, March. 2013, March 2014, April 2015 in German, depicting the sign in the right top corner but also mentioning ‘E-Plus’ in the text.

• Annex 30: Various screen shots of website www.eplus.de depicting the following sign as well as including the earlier mark ‘E-Plus’ in the text The screenshots are from the years 1999 to 2015 (generated from internet wayback machine).

• Annex 32: Copies of delivery slips to customers concerning mobile products in the years 2013 to 2015 in Germany. The following sign appears on the top right corners .

• Annexes 33, 34, 35: Advertisement material (written dates, in 2010, 2011, 2012, 2013, 2014) where the signs are depicted, and the sign ‘E-Plus’ is mentioned in the text. Copies of newsletters from the years 2006 to 2015, mentioning the sign ‘E-Plus’. All these documents are in German and almost all of them include pictures of mobile phones. Some of these include a photo of a shop front, including the sign or photos of hands-free sets, of people using phones or computers.

• Annex 36: Annual report 2010 of KPN, a former parent company of the opponent, where it is stated that the E-Plus is the third largest mobile telecommunication network operator in Germany

• Annex 37: Printout from, according to the opponent, its website dated 07/08/2001, providing information about the headquarter of the E-Plus Group in Dusseldorf.

• Annex 38: Printout from the opponent’s website explaining the current situation regarding the division of services between services offered under the earlier right and other rights such as BASE and E-Plus.

• Annex 39: ‘Facts and figures’, in English, in relation to the business divisions of the E Plus Group in 2013 and 2014, total of revenues in 2003-2013, number of customers in 2004-2014. Press information from 04/02/2014, in German mentioning ‘E-Plus’ and including some figures for the years 2012-2013.

• Annex 40: A copy of an article in German from the German newspaper ‘Handelsblatt’ of 24/01/2012, which corroborates the figures included in the documents submitted in the Annex 39 when it states i.a. that E-Plus is the third-largest mobile telecommunication provider in Germany, with more than 22 million customers (2011) and a turnover of around 3,1 billion Euro.

• Annex 41: Screenshot from the internet Wayback machine (web.archive.org) showing the Wikipedia page dated 22/06/2012 entry for E-Plus which states that E-Plus had 19 million subscribers.

• Annex 42: Screenshot from the Internet Wayback machine (web.archive.org) showing information from the opponent’s website stating that in the first quarter of 2013 E-Plus had a service revenue from mobile telecommunications of EUR 714 million, 23.9 million subscribers and approximately 4 000 full-time employees.

• Annex 43: Extract of a study entitled ‘European Telecoms Matrix Q2 2011’ from Bank of America Merrill Lynch dated 06/06/2011, which states that in 2010 E-Plus held a 19% market share in German mobile subscribers market (making it the third largest) and that the opponent’s turnover was of 3.24 billion Euro.

• Annex 44: Summary of the results taken from, according to the opponent, a study entitled ‘Market Tracking Table- Germany’ by the independent global database of mobile market information ‘Wireless Intelligence’ dated 31/05/2012, where it is stated that E-Plus market share in relation to the total connections was at 15.8 % in Q1 2000 and rose to 20.4% in Q1 2011 (data for each quarter from 2000 to 2011 and the first quarter in 2012).

• Annex 45: Copy of District Court of Hamburg judgement 29/05/2006 Ref. 406 O 318/05), in German which i.a. stated that the opponent’s European Union mark No 1 132 299 for the figurative mark enjoys enhanced distinctiveness. The translation of the relevant paragraph into English is provided.

• Annex 46: Copy of Opposition Division Decision in case B 612 426 dated 27/07/2005, in German.

• Annex 47: An extract from a market survey by a research company RDG Marketing Research, which is based on data of the research company Nielse Media, the sign ‘E-Plus’ can rely on an aided brand awareness in Germany of more than 90% in 2011. The unaided brand awareness was approx. 60% in the same year.

• Annexes 48 to 51: A few articles published in Internet e.g. on www.handy-deutschland.de, www.chip.de where the earlier mark ‘E-Plus’ is mentioned in relation to the telecommunication services. A commercial spot about the development of the E-Plus mobile telecommunications network. This spot is from 01/09/2012 and in German, the relevant parts are translated.

• Annex 52: A copy of a survey concerning the recognition of the opponent’s trade mark ‘E-Plus’ in march 2015, according to which the unaided recognition of the mark ‘E-Plus’ in Germany is 35 % and the aided awareness of this mark is 97%.

• Annex 53: Copy of Decision on opposition B 2 182 486 dated 11/02/2016, in English, attesting the enhanced level of distinctiveness of the trade mark 4 609 061.

Having examined the material listed above, the Opposition Division concludes that the evidence is sufficient to prove that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, holding a market share of nearly 20% and being the 3rd largest provider of mobile telecommunication services, as has been attested by various independent sources. The turnover figures, marketing expenditure and market surveys all prove that the mark enjoys a high degree of recognition among the relevant German public.

Although, the applicant argues that some pieces of evidence show variations of the mark at issue, in particular use of the figurative signs such as and , the use of the mark in these forms still constitutes valid use of the mark at issue as the differing elements do not alter the distinctive character of the mark. The additional symbol ‘+’ is a depiction of the element ‘PLUS’ which serves to reinforce the word and that is perceived as a minor difference that does not alter the distinctive character of the earlier mark. Moreover, the marks are written in a standard typeface.

The same applies to the colour green of the figurative mark as used in some pieces of evidence, it does not alter the distinctive character of the mark at issue. The General Court stated that strict conformity between the sign as used and the sign registered is not necessary. However, the signs as used and registered must be broadly equivalent (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50). Therefore, the applicant’s allegations in this regards, have to be rejected.

Some evidence is filed only in German and these have not been taken into account. However, contrary to the applicant’s allegations, a sufficient amount of the evidence is submitted in English, has partial translations into English or is reasonably self-evident (or includes images).

Further, the applicant argues that some of the evidence refer to the opponent’s company and, as such, are not appropriate to prove repute of the mark at issue. In this regard it is noted that the use of the company name in the material submitted is in such a way that a link can be established between the company and the earlier services for which the opponent claims reputation. Therefore, the fact that ‘E Plus’ is used as the company’s name in some pieces of information, does not preclude its use as a mark to designate services at issue.

Consequently, the Operation Division considers the evidence submitted as sufficient to prove enhance distinctiveness for the services for which the opponent has claimed reputation, namely telecommunications.

e) Global assessment, other arguments and conclusion

It must be emphasised that likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods or services, and vice versa.

The goods and services have been found partially identical and partially similar to various degrees.

The signs have been found visually, aurally and conceptually similar to a low degree. The signs at issue are similar due to the fact that they have in common the letter ‘e’ which constitutes the sole (verbal) element of the contested sign and the first element in the earlier mark. In this regard it must be noted that the opponent’s mark has been considered to have a highly distinctive character because of the recognition it possesses on the market for telecommunications services.

The degree of attention of the relevant public may vary from average to high.

In the contested sign the stylisation cannot counteract the letter ‘e’ in the overall impression of the mark. As a consequence, it is reasonable to assume that consumers would believe that the identical and similar to various degrees goods and services come from the same undertaking or, as the case may be, from economically-linked undertakings, considering especially the enhanced distinctiveness of the earlier mark.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division may be to some extent factually similar to the present case, the outcome may not be the same.

The applicant argues that it owns several earlier marks including the same typography of the letter ‘e’, namely French trade mark No 3 202 288 , French trade mark No 3 188 665 , French trade mark No 3 188 670 ; French trade mark No 4 163 618 , international trademark No 1 271 985 . The Opposition Division points out that the marks at conflict differ from those earlier French and international registrations and, therefore, the fact that a similar design of the letter ‘e’ is used in those above signs, even if they are used for a long time, is irrelevant for the proceedings at issue. For the purpose of the proceedings at issue, the Opposition Division takes into account the contested mark as applied for. Therefore, this applicant’s claim is irrelevant.

In its observations, the applicant argues that it has identified more than 200 EUTMs consisting of a stylised letter ‘e’ registered in classes 9, 35, 38 and / or 42. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the letter ‘e’. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public that perceives the letter ‘e’ as a distinctive element. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 015 061 444. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right German trade mark registration No 302 015 061 444 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 rights invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 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 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

Gueorgui IVANOV

Marzena MACIAK

Monika CISZEWSKA

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.