OPPOSITION No B 2 902 602

Uber Technologies, Inc., 1455 Market Street, 4th Floor, 94103 San Francisco, United States of America (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, EC2N 2DG London, United Kingdom (professional representative)

a g a i n s t

Helge Zimmer, Birkenredder 10, 22359 Hamburg, Germany (applicant), represented by Wolters Rechtsanwälte, Barmbeker Straße 10, 22303 Hamburg, Germany (professional representative).

On 31/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 902 602 is upheld for all the contested services.

2. European Union trade mark application No 16 399 206 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 399 206 for the word mark ‘Überbrands’. The opposition is based on, inter alia, United Kingdom trade mark registration No 3 171 549 for the word mark ‘UBER’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to this earlier right, and in relation to another earlier right Article 8(4) EUTMR was also invoked.

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 United Kingdom trade mark registration No 3 171 549 for the word mark ‘UBER’, since this mark is the most similar one to the contested sign and covers the broadest scope of services.

1. The services

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

Class 35: Advertising; advertising and promotional services; marketing services; business management; business administration; business administration in the field of transport and delivery; business management services in the field of transport and delivery; ordering services; food and grocery ordering services; product ordering and delivery services; computerized ordering service; online ordering service; office functions; online retail store services; online grocery store services; comparison shopping services; business data processing services and business administration services, namely, business data processing services and business administration services, namely, monitoring, managing and tracking of package shipments; business data processing services and business administration services, namely, business data processing services and business administration services, namely, monitoring and tracking of package shipments to ensure on-time delivery for business purposes; business management consulting services in the field of transportation and delivery; business administration services, namely, providing information and tracking information to third parties regarding pickup and delivery status via the internet and other global communications networks; business data processing services and business administration services, namely, business data processing services and business administration services, namely, follow-up services, namely, providing electronic tracking of packages and documents to others; providing consumer-to-business commerce for consumers to enter, manage and modify their consumer preference information for use by merchants to create and manage offers for delivery to consumers via a web-based system and online portals; providing incentive reward programs for customers and partners for commercial, promotional or advertising purposes; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; providing an online marketplace for users to buy, sell and exchange goods and services with other users; information, advisory and consultancy services relating to all of the aforesaid.

Class 42: Providing temporary use of online non-downloadable software for providing transportation services, bookings for transportation services and for dispatching motorized vehicles to customers, and for coordinating and obtaining delivery services; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; Providing temporary use of online non-downloadable software for planning, scheduling, controlling, monitoring, and providing information on transportation of passengers, assets, and goods; Providing temporary use of online non-downloadable software for providing information concerning pick-up and delivery of passengers, assets, and goods in transit; Providing a web site featuring software that enables customers to communicate with motorized vehicle operators, couriers, and messengers; Providing a web site featuring software that enables customers to manage and track pickup and delivery of passengers, assets, and goods; Providing temporary use of online non-downloadable software for coordinating and matching drivers and passengers for potential ridesharing; providing information and tracking information to third parties regarding pickup and delivery status via the internet and other global communications networks; information, advisory and consultancy services relating to all of the aforesaid.

The contested services are the following:

Class 35: Professional business consultancy; promotional marketing; event marketing; advertising and marketing; marketing consulting; marketing advice; marketing agency services; advertising and marketing consultancy; preparation of marketing surveys; conducting of marketing studies; advertising, marketing and promotional services; business advice relating to marketing; advertising; public relations services; consultancy regarding advertising communications strategy; marketing studies; market research.

Class 42: Design services; product design; product design and development; analysis of product design; evaluation of product design; providing information in the field of product design; analysis and evaluation of product design.

Contested services in Class 35

The contested professional business consultancy; market research are included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested promotional marketing; event marketing; advertising and marketing; marketing consulting; marketing advice; marketing agency services; advertising and marketing consultancy; preparation of marketing surveys; conducting of marketing studies; advertising, marketing and promotional services; business advice relating to marketing; advertising; public relations services; consultancy regarding advertising communications strategy; marketing studies are identical to the opponent’s advertising and promotional services; information, advisory and consultancy services relating to all of the aforesaid, either because they are identically contained in both lists (including synonyms) or because they are included in, or overlap with, the opponent’s broad categories of advertising and promotional services; information, advisory and consultancy services relating to all of the aforesaid.

Contested services in Class 42

The contested design services; product design; product design and development; analysis of product design; evaluation of product design; providing information in the field of product design; analysis and evaluation of product design include, as broader categories, or overlap with, the opponent’s design and development of computer hardware and software; information, advisory and consultancy services relating to all of the aforesaid. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

3. The signs

UBER	Überbrands
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

The word ‘uber’ or ‘über’ is a combining form denoting an outstanding or supreme example of a particular kind of person or thing (see Oxford Dictionary at https://en.oxforddictionaries.com/definition/us/uber-). As it is unusual to use the word ‘UBER’ individually, so not in combination with a noun or adjective, it has a normal degree of distinctiveness in the earlier mark.

In relation to the contested sign which is composed of a single word, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In the contested sign, the element ‘Über’, as defined above, is combined with the element ‘brands’, the latter meaning ‘a type of product manufactured/sold by a particular company under a particular name’. As the word ‘brands’ might refer to the ‘brands’ subject of the business and advertisement services in Class 35 and to the ‘marks’ to be designed in Class 42, it has a degree of distinctiveness which is below average. The word ‘Über’ is used in this sign as a combining form with the noun ‘brands’ and it will be perceived as a laudatory term that qualifies the word ‘marks’, so the whole expression will be perceived as ‘the greatest brands’. As such, the contested sign has no elements that are more distinctive than others.

Visually and aurally, the signs coincide in the element ‘UBER’, which corresponds to the full earlier mark and the first part of the contested sign. 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. However, they differ in the fact that the contested sign has an umlaut on its first letter ‘U’, while the earlier mark has not. This difference will, however, only have an impact on the visual perception of the marks, while it will have no influence on the pronunciation. As the letter ‘Ü’ does not exist in English, it will be pronounced as a normal letter ‘U’. Furthermore, the signs differ in the element ‘brands’ in the contested sign, which has a distinctiveness which is below average.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Despite the fact that the word ‘UBER’ is used individually in the earlier mark and in a combining form in the contested sign, the signs will be associated with a similar meaning on account of this element, while the additional element in the contested sign has a distinctiveness below average. Therefore, the signs are conceptually similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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. 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).

The earlier mark has an inherently normal degree of distinctiveness. The relevant public consists of business customers and the level of attention will vary from average to high.

The conflicting services are identical.

The signs are visually, aurally and conceptually similar to an average degree.

Taking into account all the relevant factors, it is concluded that even if the average consumer is capable of detecting certain visual, aural and conceptual differences between the two conflicting signs, the likelihood that he might associate the signs with each other is very real. Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, there is a likelihood of confusion on the part of the public, this even taking into account a higher degree of attention.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 3 171 549 for the word mark ‘UBER’. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier United Kingdom trade mark registration No 3 171 549 leads to the success of the opposition and to the rejection of the contested trade mark for all the 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 grounds of the opposition, namely Article 8(4) and 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

Chantal VAN RIEL

Saida CRABBE

Vita VORONECKAITE

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.