OPPOSITION No B 3 050 066

Carphone Warehouse Europe Limited, 1 Portal Way, W3 6RS London, United Kingdom (opponent), represented by Fieldfisher LLP, Riverbank House 2 Swan Lane, EC4R 3TT London, United Kingdom (professional representative)

a g a i n s t

Χρήστος Μουστάκας, Τσιμισκή 107, 54622 Θεσσαλονίκη, Greece (applicant), represented by Fotis Chatzistavrou, Ermou, 65, 546 23 Thessaloniki, Greece (professional representative).

On 09/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 066 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 639 907 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 17 639 907 for the word mark ‘phonehouse express’. The opposition is based on, inter alia, European Union trade mark registration No 1 814 052 for the word mark ‘PHONE HOUSE’ and German trade mark registration No 30 2014 045 593 for the figurative mark . The opponent invoked Article 8(1)(b) and Article (5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 1 814 052 and German trade mark registration No 30 2014 045 593.

1. The goods and services

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

European Union trade mark registration No 1 814 052 (earlier mark 1):

Class 9: Communications apparatus, equipment and accessories; telecommunications apparatus, equipment and accessories; paging apparatus and equipment, computer hardware; computer firmware; computer software; electronic games; electronic amusement apparatus, sound reproducing and/or sound recording apparatus and instruments; publications provided on-line from databases or the Internet; digital music provided from the Internet; computer software supplied from the Internet; computer software and/or telecommunications apparatus to enable connection to databases and the Internet; electric and electronic apparatus and instruments; audio and/or video signal transmitting and/or receiving apparatus; audio and/or video apparatus and instruments; loudspeakers; headphones, burglar alarm apparatus and instruments; fire alarms; smoke detectors; anti-theft warning devices; batteries; battery chargers; calculators; compact discs, CD ROMs; compact discs; DVDs; optical discs; computer discs and tapes; media for storing information, data, signals, images and/or sound; machine readable media; photographic apparatus and instruments; parts and fittings for the aforesaid goods.

Class 36: Insurance services; provision of warranties and/or guarantees.

Class 37: Installation, service, maintenance and/or repair of communications apparatus, equipment and accessories, telecommunications apparatus, equipment and accessories, and paging apparatus and equipment; installation, service, maintenance and/or repair of computer hardware and computer firmware; provision of information relating to installation, service, maintenance and/or repair of communications apparatus, equipment and accessories, computer apparatus, equipment and accessories, telecommunications apparatus and accessories, paging apparatus and equipment; installation, services repair and/or maintenance services for consumer electronic products; installation, service, repair and/or maintenance services for photographic apparatus, equipment and accessories.

Class 38: Communications services; telecommunications services; paging services; information, advisory and consultancy services relating to communications services, to telecommunications services, communications apparatus, equipment and accessories, to telecommunications apparatus, equipment and accessories, paging services and to paging apparatus and equipment; rental and hire of communications apparatus, equipment and accessories, of telecommunications apparatus, equipment and accessories, paging services and to paging apparatus and equipment; rental and hire of communications apparatus, equipment and accessories, of telecommunication apparatus, equipment and accessories, and of paging apparatus and equipment; provision of information relating to communications, telecommunications, paging and computing; providing telecommunications connections to a global computer network; message sending; electronic communication services; providing user access to a global computer network; telecommunication of information and/or computer programmes; telecommunication gateway services.

German trade mark registration No 30 2014 045 593 (earlier mark 2):

Class 9: Scientific, nautical, surveying, electronic, photographic, cinematographic, optical, weighing, measuring, signaling, checking, life-saving and teaching apparatus and instruments [included in class 9]; apparatus for recording and reproduction of sound, images and data of all kinds; sound, image and data carriers of all kinds [except unexposed films], in particular sound tapes, cassettes, compact discs, records, DAT tapes, video tapes, floppy disks, CD-ROMs, CD-Is, DVD recording medium; all the aforesaid goods recorded or unrecorded, for telecommunications, network and voice data applications; calculating machines; cata processing equipment; computer; computer software [included in class 9], especially computer and telecommunications software; equipment in specialized stores [in class 9 contained]; telecommunications apparatus and equipment, in particular for the communications and aviation sectors; mechanisms for coin operated apparatus; software [downloadable].

Class 38: Telecommunications, in particular for data processing based electronic information and communication services for public and private users; call forwarding, conference calls and SMS services as a value-added services; information about telecommunications; submitting mail on the internet; broadcasting of television programs, radio broadcasts, cable television broadcasts and radio broadcasts, all via mobile phones; providing access to a global computer network; providing access to information on the internet; providing access to software in data networks for internet access and telecommunications connections to a global computer network; providing platforms and portals on the internet; broadcasting of teleshopping programs; telecommunication services for the operation of and rental of telecommunications equipment; providing chat lines, chat rooms and forums on the internet; Videotex service; services of press agencies; performing video conferencing; electronic display transmission, storage and communication; e-mail services; Telex, telephone and radio services; hotline services, namely telephone telecommunications consulting; communication through fiber optic networks; routing and connection services for telecommunications; mobile radiotelephone service; messages and images transmission via computer and telephone; paging services; paging services by radio, telephone or other electronic communications systems; collection and supply of news and press releases (press agencies); satellite transmission; telephone services; telephone exchange; telegraph services; telegraph; telegram services; telegram communication; teleconferencing services; telescoping service; teletext services; rental of fax machines, message sending apparatus, modems, telephones and telecommunications equipment; forwarding of messages of all kinds to internet and mobile addresses; services of an online provider, namely providing access to information, text and images on the internet and electronic transmission of information, texts, musical works and images; sound, image and data transmission by cable, satellite, computer, computer networks, telephone and ISDN lines and any other electronic transmission media; provision of digital telecommunications channels for transmission of data of all kinds, in particular with the aid of video servers as a storage medium of video data; services of a network operator, information broker and provider services, namely leasing access time to data networks, in particular on the internet; telephone exchange, in particular direct preparation of call connection to this port; electronic transmission of information; rental of telecommunications equipment, in particular for data communication and the information, video and audio transmission via cables, satellite and telecommunications equipment, including consultancy therefor; providing access to software on the internet, especially for anyone for free retrievable software [so-called ''shareware'']; leasing access time to computer databases; leasing access time to computer databases; services of a network operator, information broker and provider services, namely leasing access time to computer databases, in particular on the Internet; transmission of digital files.

The contested goods and services are the following:

Class 9: Measuring, detecting and monitoring instruments, indicators and controllers; scientific and laboratory devices for treatment using electricity; magnets, magnetizers and demagnetizers; optical devices, enhancers and correctors; safety, security, protection and signalling devices; scientific research and laboratory apparatus, educational apparatus and simulators; navigation, guidance, tracking, targeting and map making devices; apparatus, instruments and cables for electricity; information technology and audio-visual, multimedia and photographic devices; information technology and audiovisual equipment; monitoring instruments; sensors and detectors; measuring, counting, alignment and calibrating instruments; testing and quality control devices; controllers (regulators); air analysis apparatus; airborne data acquisition instruments; X-ray analyzers [other than for medical use]; electric power analyzers.

Class 37: Computer hardware and telecommunication apparatus installation, maintenance and repair; alarm, lock and safe installation, maintenance and repair.

Class 38: Telecommunication services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and 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).

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

Measuring instruments; optical devices; safety, security and signalling devices; audio-visual, multimedia and photographic devices; audiovisual equipment; measuring instruments are identically contained in both lists of goods (including synonyms).

The contested detecting and monitoring instruments, indicators and controllers are included in the broad category of, or overlap with, the opponent’s checking apparatus and instruments [included in Class 9]. Therefore, they are identical.

The contested scientific and laboratory devices for treatment using electricity are included in the broad category of the opponent’s scientific apparatus and instruments [included in Class 9]. Therefore, they are identical.

The contested enhancers and correctors are included in, or overlap with, the broad category of the opponent’s optical apparatus and instruments [included in Class 9]. Therefore, they are identical.

Scientific research and laboratory apparatus, educational apparatus and simulators are included in the broad categories of the opponent’s scientific and teaching apparatus and instruments [included in Class 9]. Therefore, they are identical.

The contested protection devices are identical to the opponent’s signalling apparatus and instruments [included in Class 9], since they also overlap. Indeed, the contested devices can consist of signalling apparatus and instruments, and the signalling apparatus and instruments can be used for, inter alia, protection purposes.

The contested navigation, guidance, tracking, targeting and map making devices and the broad category of the opponent’s data processing equipment both include goods such as navigation/guidance/map-making apparatus for vehicles (on-board computers). Since there is an overlap between these goods, they are identical.

The contested apparatus, instruments and cables for electricity are included in the broad category of the opponent’s electric apparatus and instruments. Therefore, they are identical.

The contested information technology devices and information technology include, as broader categories, the opponent’s data processing equipment. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested monitoring instruments are included in the broad category of, or overlap with, the opponent’s checking apparatus and instruments [included in class 9]. Therefore, they are identical.

The contested counting, alignment and calibrating instruments; testing and quality control devices; controllers (regulators) are included in the broad category of, or overlap with, the opponent’s measuring and checking instruments [included in class 9]. Therefore, they are identical.

The contested air analysis apparatus; airborne data acquisition instruments; x-ray analyzers [other than for medical use]; electric power analyzers are included in the broad category of the opponent’s scientific apparatus and instruments [included in class 9]. Therefore, they are identical.

The contested sensors and detectors can be component parts of the opponent’s scientific and measuring apparatus and instruments [included in Class 9]. Consequently, these goods can share the same distribution channels, target the same relevant public and be produced by the same undertakings. Therefore, they are similar.

The contested magnets include, amongst others, ‘lifting magnets’ or ‘magnets for industrial purposes’. The contested magnetizers and demagnetizers include both relatively simple devices used to magnetise or demagnetise steel tools but also specialised machines used to make a substance or object magnetic or to reduce or remove magnetic properties. All these goods have some relevant factors in common with the opponent’s measuring apparatus and instruments [included in class 9] as the latter include, for instance, magnetometers used to measure magnetism (of materials or at a location). These goods are manufactured by undertakings that specialise in magnet technology, they are sold through the same distribution channels and the intended public is usually the same. Therefore, they are considered similar.

Contested services in Class 37

Computer hardware and telecommunication apparatus installation, maintenance and repair are identically contained in both lists of services (including synonyms).

The contested alarm, lock and safe installation, maintenance and repair are considered at least similar to a low degree to the opponent’s installation, service, maintenance and/or repair of communications apparatus, equipment and accessories, telecommunications apparatus, equipment and accessories, and paging apparatus and equipment; all the aforesaid services may be provided through the same distribution channels and target the same relevant public. Furthermore, these services may be complementary to each other to the extent that they concern essential components of the goods in question because the contested services can use the equipment of the opponent’s services (e.g. checking and monitoring video systems, etc.).

Contested services in Class 38

Telecommunication services are identically contained in both lists of 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 goods and services found to be identical or similar (to varying degrees) are directed at the public at large, as well as at a professional public with specific technical knowledge or expertise, such as in the IT field.

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

3. The signs

1) Earlier mark 1

PHONE HOUSE 2) Earlier mark 2	phonehouse express
Earlier trade marks	Contested sign

The relevant territories are the European Union and Germany.

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

It should be noted that the protection offered by the registration of a word mark, such as the earlier trade mark 1) and the contested sign, applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T 254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether they are depicted in lower or upper case letters.

As regards the first element of the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (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 present case, the relevant public split it into several elements, namely ‘PHONE’ and ‘HOUSE’, because they have a clear meaning in English. The relevant public will understand these words since they are very basic English words, which will be understood in all Member States. The common words ‘PHONE HOUSE’ could be somehow connected with the relevant goods and services, because they could be used in relation to telephones. However, since the expression does not have a direct meaning for any of the goods and services, it has a below average distinctive character.

The element ‘EXPRESS’ of the contested sign could be perceived as an adjective ‘used to describe special services which are provided by companies or organizations such as the Post Office, in which things are sent or done faster than usual for a higher price’ (information extracted from Collins Dictionary on 19/02/2019 at https://www.collinsdictionary.com). Since this element will be perceived as indicating that the goods and services in question can be obtained or provided quickly and easily, it has a laudatory semantic content. It therefore has a very low degree of distinctiveness for all the goods and services in question.

The first element of the earlier mark 2), ‘THE’ is the English definite article. It will be perceived as fulfilling the purpose of introducing the following words ‘PHONE HOUSE’ and not as an indicator of origin. This element is, therefore, of very limited distinctiveness. Furthermore, as earlier mark 2) is depicted in a standard black bold typeface, its minimal stylisation will be perceived as being of a purely decorative nature. Therefore, it lacks distinctiveness.

The figurative element of earlier mark 2) is fanciful; nevertheless, albeit certainly not devoid of distinctiveness, account must be taken of the fact that the verbal component of the sign usually has a stronger impact on the consumer than the figurative component (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In the present case, the verbal component of earlier mark 2) will have more impact than the figurative element, as consumers will certainly refer to earlier mark 2) by its verbal component, rather than by describing the figurative element.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, namely ‘PHONE HOUSE’ and the additional word in the contested sign will be perceived as weak, the signs are conceptually similar to a high degree.

Visually, the signs coincide in their verbal elements ‘PHONE HOUSE’. They merely differ in (i) as regards contested sign, the additional element ‘express’, of limited distinctiveness; (ii) as regards earlier mark 2), the stylisation of the letters in the earlier trade mark 2) - which however is simple and it will not distract the consumers’ attention away from the word since it merely serves to embellish -, in the article ‘THE’ and in the figurative element. As seen above the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of all the signs coincides in the verbal component ‘PHONE HOUSE’. They merely differ in the pronunciation of the verbal element ‘THE’ of the earlier trade mark 2) and ‘EXPRESS’, placed at the end of the contested sign (so as to not firstly catch the attention of consumers), which, as outlined above, both with reduced distinctiveness.

Therefore, the signs are aurally highly 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 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 marks have been extensively used and enjoy 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 marks will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as below average for all the goods and services.

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 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).

In the present case, the goods and services at issue are partly identical and partly similar to varying degrees. They target the public at large and professionals with a degree of attention that could vary from average to high.

The conflicting signs are visually, aurally and conceptually similar to a high degree. Furthermore, the earlier marks are considered to enjoy a below average degree of distinctiveness.

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. Furthermore, it is common practice in the relevant market for manufacturers or providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image.

In the present case, the differences between the conflicting signs are not sufficient to counteract their similarities, since the differences are confined to elements which have less impact than the common component ‘PHONE HOUSE’ and/or have a very limited distinctive character. In this way, the likelihood that the public might associate the signs with each other can certainly not be excluded. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand or a word variation of the earlier marks, configured in a different way according to the type of goods and services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public will regard the goods and services designated by the conflicting signs as belonging to two ranges of goods and services coming from the same undertaking.

Moreover, 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).

Considering all the above, there is a likelihood of confusion (including a likelihood of association) 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 1 814 052 and German trade mark registration No 30 2014 045 593. It follows that the contested sign must be rejected for all the contested goods and services.

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

As the earlier rights, European Union trade mark registration No 1 814 052 and German trade mark registration No 30 2014 045 593, lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Edith Elisabeth VAN DEN EEDE

Carlos MATEO PEREZ

María Clara IBÁÑEZ FIORILLO

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.