OPPOSITION No B 2 835 422

Bob Fleet Management Limited, Ingles Manor Castle Hill Avenue, CT20 2RD, Folkestone, United Kingdom (opponent), represented by Michael Gleissner and Yenny Sotomayor, Bob Fleet Management Limited, Ingles Manor Castle Hill Avenue, CT20 2RD, Folkestone, United Kingdom (employee representative)

a g a i n s t

JSTRADE Jacek Szmaj, ul. Stanki 7/3, 52423 Wrocław, Poland (applicant), represented by WTS Rzecznicy Patentowi - Witek Śnieżko i Partnerzy, ul. Weigla 12, 53-114 Wrocław, Poland (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 835 422 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 717 812 for the word mark ‘G-BOB’. The opposition is based on French trade mark registration No 4 293 494 for the word mark ‘BOB.COM’, earlier from the contested mark due to a priority in Pakistan, in relation to which 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 goods

The opponent based its opposition on all the goods of the earlier mark in Class 9. However, as follows from the submitted printout from the official database regarding the earlier mark, the registration was eventually granted only for part of the goods in Class 9 and excluded from registration ‘fittings for all the aforesaid goods’.

Consequently, the goods on which the opposition is based are the following:

Class 9: Computer hardware; computer software; computer peripherals; electronic apparatus for data processing; computer networking equipment; parts for all the aforesaid goods.

The contested goods are the following:

Class 9: Measuring, detecting and monitoring instruments, indicators and controllers; information technology and audiovisual equipment; computer buses; wireless computer peripherals; mouse [computer peripheral]; computer mouses; input devices for computers; interactive terminals; computer hardware; peripherals adapted for use with computers; controllers for computer games.

Class 28: Controllers for game consoles.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The 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

The contested computer hardware is identically contained in both lists of goods.

The contested wireless computer peripherals; mouse [computer peripheral]; computer mouses; peripherals adapted for use with computers are either included in, or overlap with, the broad category of the opponent’s computer peripherals. Therefore, they are identical.

The contested computer buses are parts of the computer architecture, subsystems that are used to connect computer components and transfer data between them. These contested goods are included in the broad category of the opponent’s computer hardware. Therefore, they are identical.

The contested interactive terminals refer to electronic or electromechanical hardware devices that are used, inter alia, for entering data into, displaying or printing data from a computer or a computing system, designed for two-way communication between operator and computer. These goods overlap with the broad category of the opponent’s computer hardware. Therefore, they are identical.

The contested input devices for computers refer to hardware used to provide data and control signals to an information processing system. As these goods overlap with the broad category of the opponent’s computer hardware, they are identical.

The term ‘information technology’ refers to ‘the study or use of systems (especially computers and telecommunications) for storing, retrieving, and sending information’; ‘audiovisual’ means ‘using both sight and sound, typically in the form of images and recorded speech or music’ and ‘equipment’ means ‘necessary items for a particular purpose’ (information extracted from Oxford Dictionaries on 24/07/2018 at en.oxforddictionaries.com/definition/information_technology; en.oxforddictionaries-.com/definition/audiovisual and en.oxforddictionaries.com/definition/equipment). Consequently, the expression ‘information technology equipment’ refers to a ‘system’ for storing, retrieving, and sending information, that is, a combination of components that are necessary for this purpose. ‘Audiovisual equipment’ includes devices that possess both a sound and a visual component. In both cases, software is often an important element of functioning of the system or gives it additional value. The contested information technology and audiovisual equipment and the opponent’s computer software in Class 9 may coincide in their distribution channels and points of sale; these goods are directed largely at the same consumers and they are likely to originate from the same kind of undertakings. Moreover, they may be complementary. Therefore, these goods are considered similar.

The contested controllers for computer games are specific devices designed to be used with computer games, typically in order to control an object or character in the game. The opponent’s computer software includes also games software and, in this sense, the contested controllers for computer games and the opponent’s computer software are considered similar. These goods target the same public and may be distributed through the same channels. In addition, they may originate from the same manufacturer.

In contrast, the contested measuring, detecting and monitoring instruments, indicators and controllers is dissimilar to all of the opponent’s goods. These goods do not have anything relevant in common with the opponent’s goods; their natures and purposes differ, as do their producers, consumers and distribution channels. They do not have complementary natures nor are they in competition with one another.

Contested goods in Class 28

The contested controllers for game consoles are specific devices designed to be used with gaming consoles, typically in order to control an object or character in the game. As noted above, the opponent’s computer software in Class 9 includes also games software and producers of computer games often sell console versions of these products. The contested controllers for game consoles and the opponent’s computer software target the same public, may be distributed through the same channels and may originate from the same manufacturer. Therefore, they are similar.

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 found to be identical or similar are directed at the public at large and specialised public with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

BOB.COM	G-BOB
Earlier trade mark	Contested sign

The relevant territory is France.

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 word mark composed of the element ‘BOB.COM’, while the contested mark is a word mark composed of the element ‘G-BOB’.

The coinciding word, ‘BOB’, will be understood by the relevant public as a male given name, a short form of the name ‘Robert’ (information extracted from Magic Mamam on 24/07/2018 at www.magicmaman.com/prenom/bob,2006200,11531.asp). It has no meaning in relation to the goods at issue; therefore, it is considered inherently distinctive to an average degree.

The baseline dot (‘.’) and the word ‘COM’ of the earlier sign will be understood by the relevant public as a top-level domain name (TLD) in the Domain Name System of the Internet, derived from the word ‘commercial’. Therefore, this element indicates that the word ‘BOB’, which precedes it, is a domain name. Consequently, the inherent distinctive character of this element is considered weak, at most.

The relevant French public will understand the letter ‘G’ in the contested sign as a homophone of the phrase ‘j'ai’, meaning ‘I have’; this is due to the fact that both ‘G’ and ‘j'ai’ are pronounced identically in French, namely as /ʒe/ (information extracted from Wiktionary on 24/07/2018 at en.wiktionary.org/wiki/g#French and en.wiktionary.org/wiki/j%27ai). The letter ‘G’ is used as ‘I have’ (j'ai) especially in the text messaging context, which is particularly relevant in the case of the contested goods, concerning computers, gaming equipment and software, which may be used by the public for exchanging text messages. As it has no meaning in relation to the contested goods, it is considered inherently distinctive to an average degree.

The hyphen (‘-‘) symbol in the contested mark will be understood as a punctuation mark used to join words and to separate syllables of a single word. It does not play an independently distinctive role within that mark and since the public does not normally perceive punctuation marks as an indication of origin, this element must be seen as weakly distinctive.

Word marks have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive word ‘BOB’.

The contested sign differs from the earlier mark in the normally distinctive letter ‘G’ and the weakly distinctive hyphen (‘-‘) symbol, both placed at the beginning of the contested sign, where consumers normally focus their attention. The earlier sign differs from the contested sign in the element, ‘.COM’, placed at its end. Although this element is at most weak for the goods at issue, it will not be completely disregarded by the public.

It should be noted that the coinciding element, BOB, is short and consumers normally perceive differences in short elements more easily. Hence, the fact that the contested sign differs from the earlier mark in two characters, ‘G-’, located at its beginning, and the earlier sign differs from the contested mark in four characters, ‘.COM’., located at its ending, is an important differentiating factor for the perception of the sign by average consumers.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters, ‘BOB’, present identically in both signs.

The pronunciation differs in the sound of the letter, ‘G’, placed at the beginning of the contested sign, that will be pronounced as /ʒe/ and in one breath together with the word ‘BOB’, like in the expression ‘j'ai Bob’. Moreover, the earlier sign differs in the sound of the element, ‘.COM’, pronounced in two words, /point/ /kɔm/, as in the relevant territory it is customary to pronounce the baseline dot (‘.’) that appears in the top-level domain names. Consequently, they differ also in the fact that the earlier sign will be pronounced in one breath, and thus in one syllable, while the contested sign will be pronounced in three syllables. In addition, the signs have different rhythm and aural length.

Therefore, and bearing in mind that the coinciding element is short, while consumers normally perceive differences in short elements more easily, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the word ‘BOB’; however, taken as a whole, they will be associated by the relevant French public with quite distinct concepts. The earlier sign will evoke a concept of a top-level domain name called ‘BOB’, while the contested sign will be understood as a first person affirmative statement, ‘I have Bob’ (‘J'ai Bob’), which, in the context of the contested goods, is rather unexpected and inherently distinctive to an average degree.

Consequently, although some conceptual similarity between the signs cannot be denied, on account of the common element ‘BOB’, considering the signs as a whole the degree of that similarity is very low.

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 as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

It should be recalled that some of the contested goods are dissimilar to the opponent’s goods. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The remaining contested goods are partially identical and partially similar to the opponent’s goods. The signs are visually and aurally similar to a low degree. As explained above in section c) of this decision, the signs are conceptually similar to a very low degree. The earlier mark as a whole has a normal degree of distinctiveness for the public.

The relevant public is composed of the public at large and the specialised public displaying an average to high degree of attention.

The Opposition Division is of the opinion that the earlier mark and the contested sign are not similar enough to lead to a likelihood of confusion and the differences allow consumers to safely distinguish between them.

The opponent relies on the similarity resulting from the common element, ‘BOB’, claiming that the remaining element of the earlier sign, ‘.COM’, is only trivial and insignificant. In this respect it should be noted, first, that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. This rule applies also to the coinciding elements that are short, like in the present case.

And second, in spite of the fact that consumers will perceive the element ‘.COM’ of the earlier mark as a reference to a domain name and, thus, consider it at most weakly distinctive for the goods, it does not mean that this element is necessarily negligible in the overall impression conveyed by that mark (26/06/2018, T-71/17, France.com (fig.) / France (fig.), § 68). This element will also be perceived by the relevant public and will help differentiate the signs on all the levels of comparison. On the visual and aural levels it will result in a longer length of the earlier sign, perceptible particularly on the aural level, as it will add two additional syllables.

Importantly, the contested sign differs in the normally distinctive letter ‘G’ and the weakly distinctive hyphen (‘-‘) symbol, placed at its beginning. It is settled case-law that 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. Therefore, the fact that the contested sign differs from the earlier mark in its two initial characters, which are clearly perceptible and which introduce serious visual and aural differences, is an important factor in the analysis of a likelihood of confusion. This element will also add a considerably distinct concept to the contested sign, which is quite unexpected in the context of the contested goods, inherently distinctive to an average degree and nowhere to be found in the earlier sign. Therefore, this element will not be overlooked by the relevant French public.

Based on the overall assessment of the earlier mark and the contested sign, the Opposition Division takes the view that in the present case the differences between the signs outweigh the similarities. These differences are sufficient to exclude any likelihood of confusion between the marks.

According to the principle of interdependence a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, and the fact that some of the goods are identical cannot, in this case, compensate for the differences between the signs. In addition, some of the goods were found only similar to the opponent’s goods which, additionally, speaks against the finding of a likelihood of confusion.

Considering all the above, there is no likelihood of confusion on any part of the relevant public in France. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Liliya YORDANOVA

Jakub MROZOWSKI

Marzena MACIAK

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.