OPPOSITION No B 3 055 040

Telefónica Germany GmbH & Co. OHG, Georg-Brauchle-Ring 50, 80992 München, 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

Kabushiki Kaisha Uhuru, 4th Floor, Hulic Kamiyacho Building, 4-3-13 Toranomon, Minato-ku, 105-0001 Tokyo, Japan (applicant), represented by Betten & Resch Patent- und Rechtsanwälte PartGmbB, Maximiliansplatz 14, 80333 München, Germany (professional representative).

On 18/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 040 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 572 215 for the figurative mark . The opposition is based on German trade mark registration No 302 015 061 444 for the word mark ‘E-Plus’ and European Union trade mark registration No 1 132 299 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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.

Proof of use of the earlier European Union trade mark registration No 1 132 299 was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the services invoked, which is the best light in which the opponent’s case can be considered.

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.

a) The goods and services

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

German trade mark registration No 302 015 061 444

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; anti-interference devices [electricity]; burglar alarms; anticathodes; apertometers [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; flashlamps for cameras; flashlamps 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 [GPS] 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 [LED]; 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 calculators; 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; starter 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; SD-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 38: Telecommunications; cable television broadcasting; 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; facsimile transmission; information about telecommunication; message sending; paging services [radio, telephone or other means of electronic communication]; providing access to databases; providing internet chatrooms; providing telecommunication channels for teleshopping services; providing telecommunications connections to a global computer network; providing user access to global computer networks; radio broadcasting; rental of access time to global computer networks; rental of facsimile apparatus; rental of message sending apparatus; rental of modems; rental of telecommunication equipment; rental of telephones; satellite transmission; telecommunications routing and junction services; teleconferencing services; television broadcasting; telex services; transmission of digital files; transmission of greeting cards online; telegram transmission; voice mail services; news agencies; wireless broadcasting; 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; broadcasting services; broadcasting services relating to internet protocol TV; provision of access to Internet protocol TV; 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; leasing of access time to a computer database; operation of a network, being telecommunication services; providing electronic bulletin boards; providing access to weblogs; providing access to podcasts; chatroom services for social networking; providing online forums and forums for social networking; forums for social networking; information and advisory services relating to any of 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.

European Union trade mark registration No 1 132 299

Class 38: Telecommunications, in particular mobile radiotelephone services; operating telecommunications networks, in particular mobile radiotelephone networks; message sending; value added services, namely services in connection with actual network services, in particular establishing a call answering system as a function of a central computer, a mailbox, transmission of short messages, call relaying, conferencing.

The contested goods and services are the following:

Class 9: Telecommunication machines and apparatus; computer hardware modules for use with the Internet of Things [IoT].

Class 42: Cloud computing, providing of operating software for accessing and using a cloud computing network; programming of operating software for accessing and using a cloud computing network; providing information on computer technology and programming via a web site; software as a service [SaaS]; computer software design; computer programming or maintenance of computer software; technological advice relating to computers, automobiles and industrial machines; rental of computers; providing computer programs on data networks.

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

Telecommunication apparatus are identically contained in both lists of goods, including synonyms (earlier German trade mark No 302 015 061 444).

The contested telecommunication machines are included in the broad category of the opponent’s telecommunication equipment of earlier German trade mark No 302 015 061 444. Therefore, they are identical.

The contested computer hardware modules for use with the Internet of Things [IoT] are included in the broad category of the opponent’s computer hardware of earlier German trade mark No 302 015 061 444. Therefore, they are identical.

Contested services in Class 42

The contested cloud computing, providing of operating software for accessing and using a cloud computing network; programming of operating software for accessing and using a cloud computing network; providing information on computer technology and programming via a web site; software as a service [SaaS]; computer software design; computer programming or maintenance of computer software; rental of computers; providing computer programs on data networks are similar to telecommunications of the earlier German trade mark No 302 015 061 444 and telecommunications, in particular mobile radiotelephone services of earlier EU No 1 132 299 as they have the same purpose. They usually coincide in producer and distribution channels. Furthermore, they are complementary.

The contested technological advice relating to computers and industrial machines is similar to the opponent’s computer software; computer hardware as they usually coincide in producer and relevant public. Furthermore, they are complementary.

The contested technological advice relating to automobiles is dissimilar to all the opponent’s goods and services in Classes 9 and 38 since they do not have any relevant points of contact that could justify finding a level of similarity between them. As regards, the opponent’s goods in Class 9, apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other. As regards the opponent’s services in Class 38, their purpose is different. Moreover, they do not have the same providers, distribution channels or relevant consumers.

b) 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 are found to be identical or similar 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.

c) The signs

E-Plus German trade mark No 302 015 061 444 (1) EU trade mark No 1 132 299 (2)
Earlier trade marks	Contested sign

The relevant territory is Germany as regards earlier mark (1) and the European Union as regards earlier mark (2).

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).

In the case of word marks, the word as such is protected, not its written form; therefore, it is irrelevant whether a word mark is depicted in lower- or upper-case letters. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T 254/06, RadioCom, EU:T:2008:165, § 43).

The earlier mark (1) is a word mark, ‘E-Plus’, and the earlier mark (2) is a figurative mark consisting of the letter ‘e’ followed by a dot and ‘plus’, depicted in a standard bold green lowercase typeface.

The element ‘E’, ‘E-‘, ‘e’ or ‘e-‘ used to meaning ‘electronic’ is common and subject to widespread use (29/11/2016, T-617/15, eSMOKINGWORLD (fig.), EU:T:2016:679; § 20, 38; 14/12/2017, R 1429/2017-4, E+ (fig.), § 12; 14/12/2017, R 1428/2017-4, E (fig.), § 12; 25/04/2017, R 1122/2016-5, E-STICK, § 49; 09/11/2016, R 1157/2016-5, e-Pedal, § 18; 20/09/2016, R 2599/2015-1, eDC Cl@ss, § 12; 19/09/2016, R 1177/2016-4, eSuspension, § 11; 03/05/2016, R 1148/2015-5, eshift, § 18). Therefore, the element ‘E-’ of the earlier mark (1) and ‘E’ followed by the green dot in the earlier mark (2) will be understood in relation to the goods and services at issue as referring to the concept of ‘electronic’, or to the fact that an action can be performed electronically through the internet or the web. In consequence, it is non-distinctive in relation to the goods in Class 9 and services in Class 38. The fact it is conjoined to ‘plus’ does not alter this conclusion.

The element ‘plus’ of the earlier marks indicates that something has a particular value or a higher quality. In relation to the goods and services at issue, it will be understood as an indication of a higher quality goods and services and, thus, as not being distinctive (15/11/2007, T-38/04, Sunplus, EU:T:2007:341, § 42; 03/03/2010, T-321/07, A+, EU:T:2010:64, § 41, 42; 16/12/2010, T-497/09, Kompressor Plus, EU:T:2010:540, § 14, 21; 14/01/2016, T-535/14, VITA+VERDE/ VITAVIT, EU:T:2016:2, § 43).

The contested figurative sign consists of a juxtaposition of black geometrical shapes: from left to right, a series of thin horizontal lines, three semi-circular figures of varying shapes and sizes, and a full circle. However, part of the relevant public will perceive the contested sign as including a lower-case letter ‘e’ and a black dot in its lower part, all depicted against a squared background with rounded corners. The Opposition Division will examine the opposition in relation to this part of the public, as this is the best light in which the opposition can be examined for the opponent.

The letter ‘e’ with a dot in the contested sign will be perceived in the above-indicated meaning, as specified in relation to the earlier marks. Therefore, it is non-distinctive for the goods and services at issue.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the non-distinctive letter ‘e’ and, as regards the earlier mark (2), in a dot. However, the signs differ in their further elements, namely the dash in between the verbal elements in the earlier mark (1), the element ‘plus’ in both earlier marks, and the figurative element in form of a squared background in the contested sign. The signs differ clearly in their stylisation, structure and the length.

It must be noted that the comparison of signs must be based on the overall impression given by the marks. In principle, the shorter a sign, the more easily the public is able to perceive all its single elements.

Furthermore, it must be pointed out that the contested sign was applied for as a figurative mark, meaning that it is solely the reproduction of the trade mark in the form applied for that is of relevance for the assessment of the similarity of the signs.

Contrary to the opponent’s argument that the graphic deviations between the signs are purely of ornamental character, the Opposition Division takes the view that the way the contested sign is represented is easily distinguishable from the earlier marks. The visual overall impression of the signs differs as the contested sign, albeit containing the same letter ‘e’ and a figurative element having a shape of a dot, is stylised in a sufficiently different way, so that its dissimilar overall graphical representation eclipses this overlap.

Consequently, taking into account all the above, the signs are visually similar at most to a very low 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 letter ‘e’, present identically in the signs. The pronunciation differs in the sound of the letters ‘P-L-U-S’ of the earlier marks.

Taking into account the considerations above regarding the distinctiveness of the coinciding letter ‘e’, it is considered that the signs are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The coincidence in the letter ‘e’ is of limited importance on account of its descriptive character. Therefore, the signs are considered conceptually similar to a very low degree.

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 marks

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 marks have a reputation in Germany in connection with Class 38 telecommunications and in the EU for telecommunications, in particular mobile radiotelephone services; operating telecommunications networks, in particular mobile radiotelephone networks; message sending; value added services, namely services in connection with actual network services, in particular establishing a call answering system as a function of a central computer, a mailbox, transmission of short messages, call relaying, conferencing.

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 15/11/2018 and 16/11/2018 the opponent submitted, in particular, the following evidence:

• Annexes 1-2: two brief outlines of the ‘E-Plus network’ history taken from Wikipedia (in English), the first one printed on 06/08/2014 and the second one on 06/04/2018. They mention, in particular, that E-Plus is the third largest mobile operator in Germany with more than 25 million subscribers.

• Annexes 3-6: compilation of advertising material, dated between 2002 and 2015, showing the use of the sign in connection with telecommunication services.

• Annexes 7-9: two press articles, dated 26/03/2008 (titled ‘E-Plus schluckt Biliganbieter Blau’ [‘E-Plus takes over low–cost supplier Blau]) and 03/10/2013 extracted from the online newspaper Frankfurter Rundschau at www.fr-online.de, and some undated pictures, all of them showing SIM-cards carrying the sign .

• Annex 10: price list and special terms and conditions for mobile telecommunications services, valid for contracts as of 15/05/2012, which refer inter alia to the E-Plus mobile telecommunications network and to a series of value-added E-Plus telecommunication services.

• Annex 11: compilation of internet screenshots of the homepage www.eplus.de from 1998 until 2016 (generated with the internet wayback machine). They show use of the sign and variations thereof, to offer mobile telecommunication services.

• Annexes 12-14: photographs of storefronts of e-plus shops, taken from different media.

• Annex 15: printout of the EUTM proprietor’s profile in a social network for business professionals (www.xing.com).

• Annex 16: screenshot of the website www.eplus-gruppe.de, dated 07/06/2014 showing use of the sign .

• Annexes 17-18: compilation of internet printouts relating to the E-Plus group, generated in October 2012, as well as of press releases of 2011 and 2012 referring to its mobile telecommunication services.

• Annexes 19-20: copies of invoices and delivery slips issued to German customers between 31/07/2010 and 18/08/2015, all of them relating to the provision of SIM-cards and mobile telecommunication services . Some of these invoices also refer to the delivery of mobile phones identified with other trade marks, such as Samsung.

• Annex 21: compilations of newsletters sent to customers from 2006 until 2015, where the sign (and variations thereof) is used in relation to telecommunication services and the retail of mobile phones.

• Annexes 22-28: compilation of press articles from 2012 and 2013 relating to the merger of the E-plus group with Telefonica Deutschland GmbH.

• Annex 29: screenshots from a commercial spot published on www.youtube.com on 01/09/2012 on the development of the E-plus group mobile telecommunications network.

• Annex 30: affidavit of Mr. Stefan Borgschulte, Head of Controlling at E-Plus Mobilfunk GmbH & Co. KG, dated 23/04/2015. It states that the sign at issue, and slightly amended versions thereof, has been used to designate the commercial origin of telecommunications services, in particular of mobile radiotelephone services, the operation of telecommunications network, the operation of a mobile radiotelephone network and message sending. It also states that the E-Plus group is the operator of the Germany’s third largest mobile telecommunications network called E-Plus net, and that it provides mobile radiotelephone services to the end consumers. The document contains as annexes some of the other documents that have been listed above.

• Annex 31: printout of the EUTM proprietor’s website eplus-gruppe.de, printed on 07/08/2014, indicating the number of E-Plus shops in Germany.

• Annexes 32-34: printout of the EUTM proprietor’s website eplus-gruppe.de, showing, inter alia, customer numbers of the e-plus group growing from 9.5 million in 2004 to 25.8 million by Q2 2014 and service revenue growing from EUR 2.1 billion in 2003 to EUR 3.0 billion in 2013.

• Annexes 35-36: screenshots dated 22/06/2012 and 06/11/2015 of the entry ‘E-Plus’ in the English version of Wikipedia.

• Annex 37: article from the online magazine Handelsblatt, dated 24/01/2012, which states that ‘E-Plus is, with more than 22 million customers (2011) and a turnover of roughly EUR 3.1 million, Germanys’ 3rd biggest telecommunications operator’.

• Annex 38: annual report 2010 of the former parent company of the E-plus Mobilfunk GmbH.

• Annex 39: 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 the German mobile subscriber market (making it the third largest) and that its turnover was EUR 3.24 billion.

• Annex 40: summary of the results taken from a study entitled ‘Market Tracking Table – Germany (Euros, Spot currency Q1 2012)’, dated 31/05/2012, which shows the calculated market share in the German mobile communications market of E-Plus from Q1 2000 until Q1 2012 (20.4% in this final period).

• Annex 41: report of the German Federal Net Agency, dated 02/03/2017, showing the market shares held by E-plus in the German mobile telecommunications market from Q4 2002 until Q4 2016.

• Annex 42: extract from a market survey by a research company RDG Marketing Research, which is based on data of the research company Nielsen Media. According to this report, 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.

• Annex 43: 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 44: copy of District Court of Hamburg judgement of 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 45-50: copies of various decisions issued by EUIPO attesting the enhanced level of distinctiveness of the opponent’s earlier marks, in particular Opposition Division decision No B 612 426 of 27/07/2005; No B 2 182 486 of 11/02/2016.

First of all, it is noted that some evidence submitted has not been translated into the language of the proceedings. However, the Opposition Division considers that some have self-explanatory character (for example, invoices) and as regards other material, the opponent submitted the necessary translations.

Having examined the material listed above, the Opposition Division concludes that the earlier trade marks have acquired a high degree of distinctiveness through their use on the market. The evidence demonstrates intensive and long-standing use of the earlier marks and the opponent’s efforts in promoting them. Even if it is true that some pieces of the information originate from the opponent itself, which in principle reduces the credibility and probative value of the evidence, given that the more independent and impartial the material, the higher its value, the information is sufficiently backed up. In particular the articles from third parties largely confirm the revenue, market share and subscription figures provided by the opponent.

The evidence shows that the public had constant, ongoing exposure to the opponent’s trade marks over a long period of time prior to the relevant date (namely, 06/12/2017 that is the filing date of the contested sign). The fact that the earlier marks are displayed in business establishments throughout Germany also means that they have been heavily used and consumers recognise the marks. The evidence proves the market share held by the opponent’s marks of nearly 20% (annex 39). Further, annex 42 confirms that the brand enjoys an unaided brand awareness of 60% and aided awareness of 90% in Germany, the opponent being the German’s 3rd biggest telecommunications operator (annex 37). In short, the abovementioned evidence indicates that the earlier trade marks have been used for a substantial period of time. The sales figures and marketing efforts suggest that the trade marks have a consolidated position on the German market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks enjoy a certain degree of recognition among the relevant public for the services claimed in Class 38.

Considering what has been stated above in section c) of this decision, the Opposition Division considers that the inherent distinctiveness of the earlier marks must be seen as low for the goods in Class 9. However, the earlier trade marks have acquired an enhanced distinctiveness through their use on the market and a certain degree of reputation among a significant part of the relevant public for the services in Class 38. Bearing in mind that, in assessing the distinctiveness acquired through use, account should be taken, in particular, of the inherent characteristics of the mark, the Opposition Division considers that the evidence shows that the earlier marks have acquired a degree of distinctiveness above their inherent low distinctiveness, that is, at most, an average degree of distinctiveness for the services in Class 38.

e) Global assessment, other arguments and conclusion

It must be stressed that for the assessment of a likelihood of confusion, what is pertinent is the signs’ overall impression conveyed to the relevant public and, accordingly, whether it is similar from the point of view of the relevant public. According to established case-law, the perception of the signs by the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (11/03/2016, Curodont, EU:T:2016:136, § 32).

The goods and services are partly identical, partly similar and partly dissimilar. The degree of the public’s attention may vary from average to high. The signs are visually similar to at most a very low degree; aurally and conceptually similar to a very low degree. Although the opponent has demonstrated that the earlier marks, which are inherently lowly distinctive, have acquired an enhanced distinctiveness through use for the services claimed in Class 38, this is considered insufficient to create a likelihood of confusion because the differences between the signs are clearly perceptible and the similarities concern an element which is inherently very weak in the signs.

When it comes to the contested sign, in the light of the goods and services at issue, it is the particular graphical representation of the letter ‘e’ that brings to it a degree of distinctiveness and its capability to serve as an origin identifier. On the other hand, the earlier marks contain an additional element, namely ‘plus’. Moreover, when it comes to the earlier figurative mark, the representation of the letter ‘e’ in it is fairly ordinary and does not have even a slight resemblance to the features of the representation of the letter in the contested sign.

Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, even for identical and similar goods and services, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar based on Article 8(1)(b) EUTMR.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The Opposition Division will continue with the examination of the opposition under Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case, the signs share some similarities. This does not mean that the relevant public is likely to establish a link between them. When consideration is given to the goods and services in question, it is clear that the similarities between the signs in dispute relate to an element that is descriptive. This is because the letter ‘e’ is subject to an extensive use and it is non-distinctive for the goods and services at issue. A certain degree of reputation has been established to be enjoyed by the earlier marks. The earlier marks contain additional elements and considering that the element ‘e’ is devoid of distinctiveness, it is the combination of ‘e(-)/(·)plus’ that enjoy the said reputation. No evidence has been submitted that for any reason the public would see the non-distinctive element alone as an origin identifier rather than the combination of all elements of the signs.

Moreover, the graphic representation of the contested sign is determinant to create a distance between the signs at issue such as to eclipse this common element. As noted above, it is the particular graphical representation of the contested sign that brings to it a degree of distinctiveness and that will be seen as the origin identifier.

Therefore, in view of the above, the similarities between the contested trade mark and the earlier trade marks are unlikely to bring the earlier trade marks to the mind of the relevant consumer. Even the certain degree of reputation enjoyed by the earlier marks and the fact that the goods and services at issue are partly identical and partly similar are not sufficient for the relevant public to make a link between them.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and 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, 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

Helen Louise MOSBACK

Marzena MACIAK

Eva Inés PÉREZ SANTONJA

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.