OPPOSITION No B 3 049 414

Deutsche Telekom AG, Friedrich-Ebert-Allee 140, 53113 Bonn, Germany (opponent), represented by Perani & Partners Spa, Piazza Armando Diaz, 7, 20123 Milano, Italy (professional representative)

a g a i n s t

Things Mobile S.R.L.,Piazza Luigi di Savoia 22, 20124 Milan (Mi), Italy (applicant), represented by D’agostini Group, Rivale Castelvecchio 6, 31100 Treviso, Italy (professional representative).

On 29/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 414 is upheld for all the contested goods.

2. European Union trade mark application No 17 566 118 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 566 118 , namely against all the goods in Class 9 and all the services in Classes 36 and 38. The opposition is based on European Union trade mark registration No 485 441, T‑Mobile (Word mark). The opponent invoked Article 8(1)(b)EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark No 485 441.

According to Article 10(1) EUTMDR (former Rule 22(1) EUTMIR, in force before 01/10/2017), a request for proof of use pursuant to Article 47(2) or (3) EUTMR will be admissible only if the applicant submits such a request within the period set by the Office for the applicant to file its observations in reply to the notice of opposition and to all the supporting facts, evidence and arguments submitted by the opponent.

On 12/09/2018 the Office invited the applicant to submit its observations. The time limit expired on 17/11/2018. The applicant’s request for proof of use was submitted on 20/11/2018, that is after the expiry of the time limit.

Therefore, the request for proof of use is not admissible pursuant to Article 10(1) EUTMDR (former Rule 22(1) EUTMIR, in force before 01/10/2017).

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 and services

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

Class 9: Electric, electronic, optical, measuring, signalling, checking (supervision), or teaching apparatus and instruments (included in class 9); apparatus for recording, transmission, processing and reproduction of sound, images or data; machine-readable data recording carrier; automatic vending machines and mechanisms for coin-operated apparatus; data-processing equipment and computers.

Class 36: Financial affairs.

Class 38: Telecommunication services, especially data, image and linguistic services, ie multimedia services, telephone connection services, provision of conference calling facilities, enquiry and order services, fax and e-mail services, helpline and emergency services, navigation and global positioning services; operation and rental of telecommunications equipment, in particular for radio and television; gathering and delivering news and general information; information about telecommunication; rental of facsimile apparatus; rental of message sending apparatus; rental of modems; rental of telephones; telecommunications value-added services included in class 38, namely telecommunications services with above-average utility providers; telecommunication services for others; all the aforesaid services including related information and consultancy services; none of the afore-mentioned services including news agencies.

The contested goods and services are the following:

Class 9: Mobile cellular telephones; SIM cards.

Class 36: Card services; providing of pre-paid cards and electronic keys and equivalent secure payment devices.

Class 38: Telecommunications, namely communications, voice and messaging services, transmitting and receiving services, and data storage services via mobile telephones.

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 ‘including’, used in the opponent’s list of services, 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 and in the opponent’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

Contested goods in Class 9

The contested mobile cellular telephones are included in the broad category of the opponent’s apparatus for recording, transmission, processing and reproduction of sound, images or data. Therefore, they are identical.

The contested SIM cards are included in the broad category of the opponent’s machine-readable data recording carrier. Therefore, they are identical.

Contested services in Class 36

The contested card services; providing of pre-paid cards and electronic keys and equivalent secure payment devices are included in the broad category of the opponent’s financial affairs. Therefore, they are identical.

Contested services in Class 38

The contested telecommunications, namely communications, voice and messaging services, transmitting and receiving services, and data storage services via mobile telephones are included in the broad category of the opponent’s telecommunication 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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention due to the technically sophisticated character of the goods (e.g mobile cellular telephones) and services (e.g. telecommunications) will be high.

3. The signs

T‑Mobile
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier sign is a word-mark, T‑Mobile. The letter ‘T’ will be understood as this letter from the alphabet by the relevant public.

The contested sign is a figurative sign composed of a figurative yellow square with a depiction of the letter ‘T’ within (understood as explained above), followed by the words ‘Things’ and ‘Mobile’ in a black standard script and with the latter word in bold. The word ‘Things’ will be understood by the English-speaking part of the public as ‘an object that one need not, cannot, or does not wish to give a specific name to’, (information extracted from Oxford English Living Dictionaries on 02/04/2019 at https://en.oxforddictionaries.com/definition/thing). This word is not descriptive, allusive or otherwise weak/non-distinctive in relation to the relevant goods and services and therefore has an average degree of distinctiveness. For the remaining part of the public, this word is meaningless and therefore, it has a normal degree of distinctiveness. There is no dominant element in the contested sign.

The word ‘mobile’ of both signs, will be understood by the relevant public as meaning, inter alia, ‘Relating to mobile phones, handheld computers, and similar technology’ (information extracted from Oxford English Living Dictionaries on 02/04/2019 at https://en.oxforddictionaries.com/definition/mobile), this element is a basic IT term, frequently used in the sale and promotion of computer and communications devices and services and is familiar to the general public in the European Union. It will be associated by the majority of the relevant public with a shortened form of the expression ‘mobile phone’. Bearing in mind that part of the relevant contested goods are mobile cellular telephones and the relevant services are telecommunications services via mobile phones, it is considered that this component is non-distinctive for these goods and services, as it refers directly to the nature and purpose of the goods and services, namely for mobile cellular telephones; SIM cards and for telecommunications, namely communications, voice and messaging services, transmitting and receiving services, and data storage services via mobile telephones. The public understands the meaning of ‘Mobile’ and will not pay as much attention to this non-distinctive component as to the other, more distinctive, components of the mark. Consequently, the impact of this non-distinctive component is limited when assessing the likelihood of confusion between the marks at issue. This element has an average level of distinction for the remaining goods and services not related to telecommunications.

Visually, the signs coincide in the letter ‘T’ and the word ‘Mobile’. They differ in the dash of the earlier mark and in the word ‘Things’ and figurative elements of the contested sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘T’ and ‘Mobile’, present identically in both signs. The pronunciation differs in the sound of the letters of the word ‛Things’ of the contested sign, which have no counterparts in the earlier sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. They are similar as coinciding in the word ‘mobile’ but this similarity does not have a big impact due to the word’s descriptive character. The attention of the relevant public will be attracted by the additional, distinctive, verbal elements, the word ‘Things’ of the contested sign, and the letter ‘T’ of both signs. Therefore, to the extent that the public will understand the meaning of the letter ‘T’, the signs are conceptually similar, as they will be partly associated with a similar meaning.

For the part of the public that does not perceive the figurative design of the letter ‘T’ of the contested sign, and only understands the letter ‘T’ of the earlier mark (since one of the signs will not be associated with any meaning), the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive 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 that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 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).

The goods and services are identical.

The signs are visually and aurally similar to an average degree, and conceptually similar for a part of the relevant public. The earlier mark is entirely included in the contested sign. The word ‘Mobile’ is non-distinctive in relation to some of the goods and services, however for a part of the services it has an average degree of distinctiveness.

Bearing in mind the average degree of distinctiveness of the earlier mark, it is considered that the visual and aural differences between the signs (the word ‘Thing’ and figurative elements of the contested sign) are not sufficient in this case to counterbalance the visual and aural coincidences between them, even taking into account that the level of attention of the relevant public for the goods and services in question will be higher than average.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Indeed, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In its observations, the applicant provides a list of links to websites to show how the contested trade mark is used. However, the filing of evidence showing the goods for which the contested trade mark is actually used is of no relevance in the evaluation of these proceedings. When assessing likelihood of confusion, the signs have to be compared in relation to the goods and services they are protected for, that is, in relation to the goods and services they are registered for or for which registration is sought. The actual or possible use of the earlier mark in relation to more specific goods is irrelevant when comparing the signs.

Furthermore, the applicant states in its observations that the opponent failed to provide a translation of a document into the language of the proceedings (it provided a partial translation of the renewal of the earlier trade mark), however, as the opponent selected, in the notice of opposition, the option accepting the importation of the necessary information for its trade mark from the relevant database for substantiation purposes, and the necessary data was in the language of proceedings, this claim has to be set aside

The applicant argues that the word ‘Mobile’ has a descriptive character and refers to previous decisions of the Office to support its argument, inter alia: 11/01/2005, B 516 015; 20/09/2001, C‑383/99 P, Baby Dry, EU:C:2001:461; 07/06/2001, T‑359/99 EuroHealth, EU:T:2001:151. These decisions stated that the signs were of a descriptive character. In the present case, the Office has taken into account the descriptive character of the word ‘Mobile’ in relation to some of the goods and services, but the signs in the present case have additional elements and they are not comparable to the signs in those decisions. In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above and the identity of the goods and services, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 485 441. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Dorothée SCHLIEPHAKE

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Volker MENSING

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.