OPPOSITION No B 3 050 364

Viber Media S.à r.l., 2, rue du Fossé, 1536 Luxembourg, Luxembourg (opponent), represented by Barker Brettell Sweden AB, Östermalmsgatan 87, 114 59 Stockholm, Sweden (professional representative)

a g a i n s t

Viber Light B.V., Zandberglaan 17, 4818 GH Breda, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative).

On 30/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 364 is partially upheld, namely for the following contested goods:

Class 9: Photographic apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; signal cables for IT, AV and telecommunication; fiber optic cables; junction sleeves and other connectors for optical fibres; optical fibre sensors; parts for the aforesaid goods included in this class.

2. European Union trade mark application No 17 679 011 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

On 19/04/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 679 011 (figurative mark). The opposition is based on international trade mark registration designating the European Union, Estonia, Latvia and Lithuania No 1 080 874 ‘VIBER’ . The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

The opposition is based on international trade mark registration No 1 080 874, designating the European Union, Estonia, Latvia and Lithuania. At this point, the Opposition Division finds it appropriate to examine the opposition in relation to the opponent’s international trade mark registration No 1 080 874 designating the European Union.

a) The goods and services

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

Class 38: Internet and peer-to-peer computer services, namely, electronic transmission of audio, video and other data and documents among computers, electronic transmission of data and documents over computer terminals and instant messaging services; communications by means of or aided by computer, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the internet; transmission of audio, video, images, text and other data by means of a communications network; communication services, namely, providing electronic transmission of information and data; electronic, electric and digital transmission of voice, data, images, signals and messages; telecommunications and information technology services, namely, transmission of voice, data, images, audio, video and information via telephone and global communication networks; wireless telecommunications services, namely, the wireless transmission of voice and data; telecommunications services, namely, providing voice over internet protocol services; telecommunications services, namely, providing network access point for third party users; telecommunications services, namely, providing voice over internet protocol services; providing network access point services for the exchange of internet traffic among internet traffic carriers; telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the internet; telecommunications services, namely, electronic transmission of data, messages and information; computer aided transmission of messages and images; electronic messaging services, namely, sending, receiving and forwarding messages in the form of text, audio, images or video; provision and operation of electronic conferencing, discussion groups and chat rooms via the internet; internet and video-conference services; conference services, namely, conferences across a computer network; instant messaging services; streaming of audio-visual material on the internet; providing on-line electronic bulletin boards and forums for transmission of messages among computer users; electronic transmission of messages and data; electronic messaging services, namely, simple message service (SMS) and multimedia message service (MMS) via telecommunications and computer networks; communication services, namely, computer transmission of information, messaging, VOIP, video calling and conferencing accessed by means of an access number; communications services through the use of subscriber identity module (SIM) cards, namely, computer transmission of information, VOIP, messaging, video calling and conferencing; personal communications services; telecommunication services, namely, transmission of data and information via pagers; electronic mail services; providing multiple user interactive access to a global communications network; transmission and broadcast of audio and video programming of all types via telephone, television, and global communications networks; video and audio teleconferencing via the internet, asynchronous transfer mode services, Integrated Service Digital Network (ISDN) services, Internet Protocol (IP) communications services, namely, VOIP, IPTV services; communication. services, namely, Virtual Private Network (VPN) services and private telephone line services; switched voice, data, video and multimedia services, namely, computer transmission of information, VOIP, messaging, video calling and conferencing; providing facsimile transmission services; voice mail services; telecommunications services, namely, providing toll free telephone services and call routing services; messaging center services in the nature of telephone voice messaging services; video, audio and data telephone conference services; electronic messaging services; telecommunication services, namely, cellular telephone services; providing multiple-user access to a communications network; on-line forums for transmission of messages among computer users concerning software development; online chat rooms and electronic bulletin boards for registered users for transmission of messages concerning collegiate life, general interest, classifieds, virtual community, social networking, photo sharing, and transmission of photographic images; provision of on-line forums for the transmission of photographic images; provision of on-line forums for transmission of messages on topics of general interest; providing access to computer, electronic and online databases; providing online forums for transmission of messages on topics of general interest; providing online communications links which transfer web site users to other local and global web pages; providing internet access to web sites for others hosted on computer servers accessible via a global computer network; providing internet access to third party web sites by enabling users to log in through a universal username and password via a global computer network and other communication networks; providing online chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; audio, text and video broadcasting services over the internet or other communications networks featuring the uploaded, posted and tagged audio, text and video content of others; audio, text and video broadcasting services over the internet or other communications networks, namely, electronically transmitting audio clips, text and video clips of others; providing access to computer databases in the fields of social networking.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling and checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; signal cables for IT, AV and telecommunication; fiber optic cables; junction sleeves and other connectors for optical fibres; optical fibre sensors; optical devices, enhancers and correctors; lasers; parts for the aforesaid goods included in this class.

Class 11: Lighting apparatus, equipment, fixtures, elements, installations and articles; lights; light objects; fittings for the aforesaid goods; fiber optic lighting installations; parts of the aforesaid goods included in this class.

Class 35: Business mediation in the purchase and sale, import and export, and wholesaling and retailing of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling and checking (supervision) apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, parts for the aforesaid goods; business mediation in the purchase and sale, import and export, and wholesaling and retailing of apparatus for recording, transmission or reproduction of sound or images, signal cables for IT, AV and telecommunication, fibre optic cables, junction sleeves and other connectors for optical fibres, parts for the aforesaid goods; business mediation in the purchase and sale, import and export, and wholesaling and retailing of lighting apparatus, devices, fixtures, elements, installations and articles, lamps, luminous objects, fittings for the aforesaid goods, lighting installations comprising optical fibres, optical apparatus, enhancers and correctors, lasers, parts for the aforesaid; provision of commercial information; arranging of events for promotional, publicity and/or commercial purposes; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services. The term ‘namely’, used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The opponent’s services are different types of internet and peer-to-peer computer and access services, communication, telecommunication, broadcasting, streaming, information and information technology services. They are services that allow at least one party to communicate with another, as well as services for the broadcasting and transmission of data. These services are provided by telecommunication network operators, broadcasting companies, internet service providers and other businesses that have the technical equipment and knowledge required for the provision of access to voice and/or data communication services.

The contested apparatus for recording, transmission or reproduction of sound or images (such as computers and smartphones), and the respective parts for the aforesaid goods included in this class are used in the communication of audio or video information over a distance via radio waves, optical signals, etc. or along a transmission line. Consumers use these goods, inter alia, when they want to communicate with others. The opponent’s telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the internet allow people to communicate remotely.

There is a link between these goods in Class 9 (devices and apparatus used in telecommunications) and the opponent’s services in Class 38 (telecommunication services). They are similar to at least a low degree because they are complementary and, even though their nature is different, their purposes and distribution channels are the same, they target the same public.

Likewise, the contested photographic apparatus and instruments and the respective parts for the aforesaid goods included in this class, which include devices such as web cameras, used in the recording, transmission or reproduction of sound and images are similar to at least a low degree to the opponent’s telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the internet.

The contested signal cables for IT, AV and telecommunication; fiber optic cables; junction sleeves and other connectors for optical fibres; optical fibre sensors and parts for the aforesaid goods included in this class are similar to at least a low degree to the opponent’s providing network access point services for the exchange of internet traffic among internet traffic carriers. These goods enable, facilitate or contribute to the functioning of the opponent’s telecommunication services. They are complementary because the applicant’s goods are used in close connection with the opponent’s services since they are, or can be, absolutely necessary for performing these services and, from the viewpoint of the consumer, they are indispensable for the provision of the service. They are, moreover, regularly marketed together. Consequently, the consumer targeted may expect that these goods come from the same company that provides the opponent’s providing network access point services for the exchange of internet traffic among internet traffic carriers.

The remaining contested goods in Class 9 are dissimilar to the opponent’s services in Class 38. There is a fundamental difference in the nature of these services when compared to any of the remaining goods in Class 9 since goods are tangible whereas services are intangible.

Furthermore, there are differences in the purposes of the opponent’s services and the contested scientific, nautical, surveying, cinematographic, optical, weighing, measuring, signalling and checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; lasers; optical devices, enhancers and correctors; parts for the aforesaid goods included in this class. These goods and services do not originate from the same producers or providers, and they target different publics. They do not have the same channels of distribution. These goods and services are not complementary: there is no indispensable or important relationship between the contested goods and the opponent’s services in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (19/05/2016, R 258/2009‑1 & R 265/2009‑1, GALILEI / GALILEO et al., § 42).

The opponent refers to the decision (07/06/2017, B 2 470 055) of the Opposition Division as an example of similarity between all the contested goods in Class 9 and the telecommunication services in Class 38. However, in the cited decision similarity with telecommunication services was found only with respect to apparatus for recording, transmission or reproduction of sound or images, a conclusion which is fully supported by the present Opposition Division.

The opponent refers also to the decision of the Board of Appeal (10/05/2019, R 2378/2018‑5 Payper / Payper et al.) where, however, the goods in Class 9 are different (data processing equipment) and therefore the cited case is not applicable to the present opposition.

Contested goods in Class 11

The contested goods in Class 11 are in general lighting apparatus, installations and equipment and parts thereof. In addition to the different nature, they have a different purpose (to provide light) from the opponent’s services (telecommunication). These goods and the opponent’s services are not distributed through the same channels, have different manufacturers/providers, and target different publics. Finally, they are neither in competition nor complementary, and they have different methods of use. Therefore, they are dissimilar.

The opponent claims that there is a low degree of similarity between the contested goods in Class 11 and the opponent’s services and refers to the lights/torches of the smartphones and the lighting signals as means of communication. However, as mentioned above, the purpose of the applicant’s goods in Class 11 is to provide light and not to be used for communication. The consumer does not purchase a smartphone to use it as a lamp nor articles for lighting to use them for communication.

Turning to the development of the technology used by the opponent as a reason for arguing similarity, it should be noted that the mere fact that the Smart lighting and telecommunications make use of the development of the technology does not suffice to acknowledge a relevant similarity.

The opponent also claims that the goods and services in question could be sold under the same trade mark and presents as evidence a screenshot from the British Telecommunications PLC’s website, offering lighting products for sale. However, it is clear that the cited website offers lighting products not under the brand of British Telecommunications PLC, but under their original brands (‘Hive’, ‘Philips’, ‘TP Link’ etc.). Therefore, this evidence cannot alter the above conclusions.

Contested services in Class 35

The contested services include business mediation in the purchase and sale, import and export, and wholesaling and retailing of the contested goods in Classes 9 and 11, consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet. They have a different purpose from the opponent’s services since ‘business mediation’ is a form of dispute resolution between business partners in conflict. The services are rendered by specialists with the purpose of helping businesses to resolve their business-related problems be it in the area of purchase and sale, import and export, or in the context of wholesaling and retailing (08/06/2018, R 2419/2017‑4, ROMBIT CONNECTING DIGITAL MINDS / combit). Business mediation also includes services when a third party connects buyers and sellers, negotiates between them and earns commission for such services. These contested services and the opponent’s services in Class 38 target different publics, they are provided by professionals with different expertise through different distribution channels. Moreover, those services are neither complementary nor in competition.

Therefore, the contested business mediation in the purchase and sale, import and export, and wholesaling and retailing of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling and checking (supervision) apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, parts for the aforesaid goods; business mediation in the purchase and sale, import and export, and wholesaling and retailing of apparatus for recording, transmission or reproduction of sound or images, signal cables for IT, AV and telecommunication, fibre optic cables, junction sleeves and other connectors for optical fibres, parts for the aforesaid goods; business mediation in the purchase and sale, import and export, and wholesaling and retailing of lighting apparatus, devices, fixtures, elements, installations and articles, lamps, luminous objects, fittings for the aforesaid goods, lighting installations comprising optical fibres, optical apparatus, enhancers and correctors, lasers, parts for the aforesaid; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet are dissimilar to the opponent’s services in Class 38.

The contested provision of commercial information are services related to business analysis, business information and market research. These services are provided by specialists familiar with the respective market and aim to help a business to develop and expand its market share.

The contested arranging of events for promotional, publicity and/or commercial purposes consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity and could, moreover, also include the organisation of a marketplace for buyers and sellers, or of trade fairs. Those services are provided by advertising or other specialised companies in the trade of goods and services, marketing and merchandising.

Therefore, the contested provision of commercial information; arranging of events for promotional, publicity and/or commercial purposes; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the internet are dissimilar to the opponent’s telecommunication services in Class 38, since besides the different purposes and providers, as explained above, they target different publics, have different distribution channels and they are neither complementary nor in competition.

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 found to be similar to at least a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

The relevant public’s degree of attention varies from average to above average, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

VIBER
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘light’ of the contested sign is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as in Ireland and Malta.

The verbal element ‘VIBER’ present in both signs is meaningless and therefore distinctive.

The contested sign consists of a stylised depiction of the verbal element ‘VIBER’ with the verbal element ‘LIGHT’ underneath in standard upper-case letters. Due to its size and position, ‘VIBER’ is the dominant element in the contested sign. The verbal element ‘LIGHT’, in the context of the relevant goods is most likely to be understood as the ‘natural agent that stimulates sight and makes things visible’ (information extracted from Lexico on 09/06/2021 at https://www.lexico.com/en/definition/light). Therefore, it would have a reduced degree of distinctiveness for the relevant goods as it would be seen as an indication that the goods are used to carry light (e.g. signal cables or optical fibre sensors) or as reference to other characteristics or functions (e.g. of photographic apparatus and instruments).

Visually, when figurative marks with verbal elements and word marks are compared, what matters is whether the signs coincide in a significant number of letters in the same position and whether the verbal element in the figurative sign is highly stylised. In the present case, the signs coincide in the verbal element ‘VIBER’, composed of five identical letters placed in the same order. The visual difference between the signs is based on a stylisation of the verbal element ‘VIBER’ and the presence of the additional verbal element ‘LIGHT’ in the contested sign. Taking into account the secondary position of the verbal element ‘LIGHT’ and the distinctiveness factor, the marks are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘VIBER’ present identically in both signs. The pronunciation differs in the sound of the verbal element ‘LIGHT’ in the contested sign, which has no counterpart in the earlier sign, if this verbal element is pronounced by the relevant consumers taking into account its subordinate nature and reduced distinctiveness. Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The coinciding verbal element ‘VIBER’ does not have any meaning for the relevant public, but the verbal element ‘LIGHT’ (although of reduced distinctiveness) will be associated with the meaning explained above. Therefore, the signs are conceptually not similar. However, this will not have much impact on the relevant public taking into account the reduced distinctiveness of this differing element.

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 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 claims that the earlier trade mark is inherently very distinctive and that it, moreover, enjoys enhanced distinctiveness but did not submit any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Contrary to the opponent’s arguments, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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.

In the present case the contested goods and services are partially similar to at least a low degree and partially dissimilar to the opponent’s services. The relevant public’s degree of attention varies from average to above average. The signs are visually and aurally similar to at least an average degree and conceptually not similar, which however is based on an element of limited impact. The distinctiveness of the earlier mark is normal.

The entire earlier mark ‘VIBER’ is reproduced in the contested sign. Moreover, it is at the top of the contested sign, where it will immediately attract the consumer’s attention, also due to the fact that it is dominant, and will be remembered more clearly. The differing verbal element ‘LIGHT’ due to its secondary impact and distinctiveness issue is likely to remain in the periphery of the consumer’s perception.

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).

In the present case the degree of similarity of the goods and services would be offset by the at least average degree of visual and aural similarities between the signs. As to the possible heightened degree of attention, 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).

Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public in Ireland and Malta. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 080 874 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods found to be similar to at least a low degree to the opponent’s services.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

The opponent has also based its opposition on international trade mark registration No 1 080 874, designating Estonia, Latvia and Lithuania. Since the mark in relation to these designated countries covers the same scope of services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Rasa BARAKAUSKIENÉ

Inés GARCÍA LLEDÓ

Michele M. BENEDETTI-ALOISI

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.