OPPOSITION No B 3 054 906

Billie GmbH, Charlottenstraße 4, 10969 Berlin, Germany (opponent), represented by Lubberger Lehment - Rechtsanwälte Partnerschaft mbB, Meinekestr. 4, 10719 Berlin, Germany (professional representative)

a g a i n s t

Mijnkassabon Nederland B.V., Beursplein 37, 3011 AA Rotterdam, Netherlands (applicant), represented by Brandmerk! Intellectual Property, Minervahuis III, Rodezand 34, 3011 AN Rotterdam, Netherlands (professional representative)

On 02/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 054 906 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 680 703 is rejected in its entirety.

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

REASONS

On 14/06/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 680 703 ‘IBILLY’ (word mark). The opposition is based on European Union trade mark registration No 16 400 971 ‘Billie’ (word mark). The opponent invoked Article 8(1)(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.

a) The goods and services

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

Class 35: Business analysis, research and information services; business assistance, management and administrative services; advertising, marketing and promotional services; data processing; accountancy, book keeping and auditing; updating of business information on a computer data base; business information services provided on-line from a computer database or the internet; collection and systematization of business data.

Class 36: Insurance; real estate services; fundraising and sponsorship; provision of prepaid cards and tokens; safe deposit services; financial and monetary services, and banking; credit services; finance services; valuation services; debt collection; factoring; financial brokerage services; arranging of credit; provision of information relating to debt factoring; provision of credit rating; credit risk insurance [factoring].

Class 42: IT services; design, development and implementation of software; hosting web portals; provision of search engines for the internet; electronic storage of business information; electronic storage of documents; all of the aforesaid services solely relating to an internet platform and software for providing factoring services, financial services, mediation and insurance underwriting; science and technology services; testing, authentication and quality control.

The contested goods and services are the following:

Class 9: Downloadable software in the nature of a mobile application; downloadable computer software in the form of a mobile application for digitising, indexing, electronically archiving, sending and sharing receipts, customer cards and other documents; downloadable computer software in the form of a mobile application for understanding and managing personal finances; downloadable computer software, namely computer software for digitising, indexing, electronically archiving, sending and sharing receipts, customer cards and other documents; downloadable software, namely, computer software for understanding and managing personal finances; downloadable computer software for processing images, graphics, audio, video, and text; communications software for electronically exchanging data; computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; computer software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; computer software for personal information management, and data synchronization software; computer software for use as an application programming interface (API).

Class 38: Telecommunications; telecommunication services, namely, data transmission and reception services via telecommunication networks; telecommunications, namely electronic transmission of data, messages, graphics, images, audio, video and information; telecommunication services, namely, electronic transmission of digital receipts, customer cards and other digital documents; electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunication networks; peer-to-peer data, document, photograph and video sharing, namely electronic transmission of digital receipts, customer cards, photograph files, videos and audio-visual material between users; providing access to computer, electronic and online databases; telecommunications, namely services in the field of instant messaging; computer mailbox services; providing of online forums for communicating on topics of general interest; providing of online communications connections for connecting mobile device and internet users to other local and global online sites; information and consultancy relating to all the aforesaid services.

Class 42: ICT services; design, development, maintenance and updating of computer software, including computer software for digitising, indexing, electronically archiving, sending and sharing digital receipts, customer cards and other digital documents; design, development, maintenance and updating of computer software, including computer software for understanding and managing personal finances; application service provider services, namely providing, hosting, managing, developing and maintaining applications, computer software, websites and databases in the field of wireless communications, access to information via mobile devices and remote data management for the wireless delivery of content to hand-held computers, laptop computers and mobile electronic devices; providing of temporary use of non-downloadable online software and applications for digitising, indexing, electronically archiving, sending and sharing receipts, customer cards and other documents; providing of temporary use of non-downloadable online software and applications for understanding and managing personal finances; design, development, maintenance and updating of computer software, including computer software for creating an online community for registered users to participate in social networks; creation of virtual communities for users to participate in discussions, receive feedback from fellow users, and participate in social, business and community networks; hosting of electronic facilities, for others, for interactive discussions via communications networks; computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services with computer software for digitising, indexing, electronically archiving, sending and sharing receipts, customer cards and other documents; application service provider (ASP) services with software for understanding and managing personal finances; providing of an online network service enabling users to transmit personal identity data to and share personal identity data with and among a variety of online facilities; providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, electronic media, photographic images and audio visual information, on computer and communication networks; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; providing of online facilities enabling users to upload, modify and share audio, video, photographic images, text, graphics and data; software as a service (SaaS) with computer software for digitising, indexing, electronically archiving, sending and sharing digital receipts, customer cards and other digital documents; software as a service (SaaS) with computer software for understanding and managing personal finances; consultancy and information relating to the aforesaid services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ’including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and 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 contested downloadable software in the nature of a mobile application; computer software for use as an application programming interface (API); downloadable computer software in the form of a mobile application for digitising, indexing, electronically archiving, sending and sharing receipts, customer cards and other documents; downloadable computer software in the form of a mobile application for understanding and managing personal finances; downloadable computer software, namely computer software for digitising, indexing, electronically archiving, sending and sharing receipts, customer cards and other documents; downloadable software, namely, computer software for understanding and managing personal finances; downloadable computer software for processing images, graphics, audio, video, and text; communications software for electronically exchanging data; computer software for creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; software for sending and receiving electronic messages, graphics, images, audio and audio visual content via global communication networks; computer software for the collection, managing, editing, organizing, modifying, transmission, sharing, and storage of data and information; computer software for personal information management, and data synchronization software are various types of software. Therefore, they are similar to the opponent’s design, development and implementation of software; all of the aforesaid services solely relating to an internet platform and software for providing factoring services, financial services, mediation and insurance underwriting in Class 42, because they are complementary, are directed at the same consumers and are likely to originate from the same kind of undertakings.

Contested services in Class 38

The contested telecommunications; telecommunication services, namely, data transmission and reception services via telecommunication networks; telecommunications, namely electronic transmission of data, messages, graphics, images, audio, video and information; telecommunication services, namely, electronic transmission of digital receipts, customer cards and other digital documents; electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunication networks; peer-to-peer data, document, photograph and video sharing, namely electronic transmission of digital receipts, customer cards, photograph files, videos and audio-visual material between users; providing access to computer, electronic and online databases; telecommunications, namely services in the field of instant messaging; computer mailbox services; providing of online forums for communicating on topics of general interest; providing of online communications connections for connecting mobile device and internet users to other local and global online sites; information and consultancy relating to all the aforesaid services are similar to the opponent’s design, development and implementation of software; all of the aforesaid services solely relating to an internet platform and software for providing factoring services, financial services, mediation and insurance underwriting in Class 42, because they can coincide in provider, can have the same purpose, usually coincide in distribution channels and are complementary.

Contested services in Class 42

The contested hosting of electronic facilities, for others, for interactive discussions via communications networks; computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; application service provider (ASP) services, namely, hosting computer software applications of others include, as broader categories (that cannot be dissected ex-officio), or overlap with the opponent’s hosting web portals; all of the aforesaid services solely relating to an internet platform and software for providing factoring services, financial services, mediation and insurance underwriting. Therefore, they are identical.

The opponent’s IT services are defined as the technology involving the development, maintenance, and use of computer systems, software, and networks for the processing and distribution of data. In this case, they are limited by the specification ‘all of the aforesaid services solely relating to an internet platform and software for providing factoring services, financial services, mediation and insurance underwriting’. Consequently, these services overlap with the contested ICT services; providing of temporary use of non-downloadable online software and applications for digitising, indexing, electronically archiving, sending and sharing receipts, customer cards and other documents; providing of temporary use of non-downloadable online software and applications for understanding and managing personal finances; creation of virtual communities for users to participate in discussions, receive feedback from fellow users, and participate in social, business and community networks; application service provider (ASP) services with computer software for digitising, indexing, electronically archiving, sending and sharing receipts, customer cards and other documents; application service provider (ASP) services with software for understanding and managing personal finances; providing of an online network service enabling users to transmit personal identity data to and share personal identity data with and among a variety of online facilities; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; providing of online facilities enabling users to upload, modify and share audio, video, photographic images, text, graphics and data; software as a service (SaaS) with computer software for digitising, indexing, electronically archiving, sending and sharing digital receipts, customer cards and other digital documents; software as a service (SaaS) with computer software for understanding and managing personal finances; consultancy and information relating to the aforesaid services. Therefore, they are considered identical.

The contested providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, electronic media, photographic images and audio visual information, on computer and communication networks are included in the opponent’s broad category of science and technology services in Class 42. Therefore, they are identical.

The contested design, development, maintenance and updating of computer software, including computer software for digitising, indexing, electronically archiving, sending and sharing digital receipts, customer cards and other digital documents; design, development, maintenance and updating of computer software, including computer software for understanding and managing personal finances; application service provider services, namely providing, hosting, managing, developing and maintaining applications, computer software, websites and databases in the field of wireless communications, access to information via mobile devices and remote data management for the wireless delivery of content to hand-held computers, laptop computers and mobile electronic devices; design, development, maintenance and updating of computer software, including computer software for creating an online community for registered users to participate in social networks are identical to the opponent’s design, development and implementation of software; all of the aforesaid services solely relating to an internet platform and software for providing factoring services, financial services, mediation and insurance underwriting, either because the opponent’s services include, are included in, or overlap with, the contested services.

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 identical or similar are directed at the public at large (e.g. providing of online facilities enabling users to upload, modify and share audio, video, photographic images, text, graphics and data) and at professionals (e.g. application service provider (ASP) services with computer software for digitising, indexing, electronically archiving, sending and sharing receipts, customer cards and other documents).

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

c) The signs

Billie	IBILLY
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs under comparison may be understood by part of the public in the relevant territory, which will lead to conceptual differences between them. They are, however, meaningless for at least Spanish- and Portuguese-speaking consumers. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish- and Portuguese-speaking part of the public, for whom the signs do not present conceptual differences. In addition, for this part of the public the verbal elements ‘Billie’ and ‘IBILLY’ have an average degree of distinctiveness, since they are meaningless in relation to the goods and services compared in section a), above.

The marks are word marks and, therefore, the word as such is protected and not its written form. It is irrelevant whether word marks are represented in lower-case or upper-case letters.

Visually and aurally, the signs coincide in ‘Bill*’ and ‘*BILL*’.They differ in the first letter ‘I*’ of the contested sign and in their last letters, ‘*ie’ of the earlier mark and ‘*y’ of the contested sign.

The possibility cannot be excluded that part of the public (e.g. IT professionals, who are more familiar with English terms and, therefore, with English pronunciation) will pronounce the last letters ‘*ie’ and ‘*y’ identically. In this case, the signs will only differ aurally in the sound of the first letter ‘I*’ of the contested sign.

Therefore, the marks are visually similar to an average degree, and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public referred to above. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The signs are visually similar to an average degree, aurally similar to at least an average degree and cannot be compared conceptually. The earlier mark has an average degree of distinctiveness.

The goods and services under comparison are partly identical and partly similar. They are directed at the public at large and at professionals. The public’s degree of attentiveness varies from average to high.

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). 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)

The differences between the signs are not visually or aurally striking, and do not lead to conceptual differences. Consumers only have the differing letters, referred to in section c) above, to differentiate between the marks. However, even the differing last letters can be pronounced identically by part of the public (e.g. IT professionals), which reduces the differences to the first letter ‘I*’ of the contested sign.

Even if IT professionals pay a higher than average degree of attention during the purchase of certain goods/services, for the reasons explained above, it is precisely this part of the public that can be expected to have a higher degree of English knowledge, and could, therefore, pronounce the different last letters ‘*ie’ and ‘*y’ identically. Therefore, despite their higher degree of attention, the signs could be confused, based on the imperfect recollection principle, explained above.

Considering all the above, there is a likelihood of confusion on the part of Spanish- and the Portuguese-speaking part of the public. 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 well founded on the basis of the opponent’s European Union trade mark registration No 16 400 971 ‘Billie’ (word mark). It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, 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

Sofía SACRISTÁN MARTÍNEZ

María del Carmen SUCH SANCHEZ

Vít MAHELKA

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.