OPPOSITION No B 3 057 815

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

Shenzhen eMeet Technology Co., Ltd., 14th Floor, B1 Building, Nanshan i Park, No.1001 Xueyuan Road, Taoyuan Street, Nanshan District, Shenzhen, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas, Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 28/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 815 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 884 309 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.

1. The services

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

German trade mark No 302 015 061 444

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 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 services are the following:

Class 38: Transmission of sound, picture and data signals; transmission of sound, video and information; voice transmission services; wireless voice mail services; wireless electronic transmission of data; radio communications; wireless cellular phone services; telephone services; telephone voice messaging services; teleconferencing services; communications by telephone; wireless transfer of data via digital mobile telephony; transmission of messages by telephone; transmission of audio and video content via computer networks; digital transmission services for audio and video data; audio broadcasting.

2. The signs

E-Plus German trade mark No 302 015 061 444 (1) EUTM 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).

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

The prefix ‘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 (1) mark and ‘E’ followed by the green dot in the earlier (2) mark will be understood in relation to the 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 services at issue. 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 services at issue, it will be understood as an indication of a higher quality 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 sign consists of a broken rhombus like shape with rounded corners and the right down line being longer then the remaining ones, sticking out downwards. The left top side line has a shorter perpendicular line. Thus, it concerns an abstract graphic device, the distinctive character of which in relation to the services at issue is normal.

The opponent argues that the contested sign consists of a stylised letter ‘E’. However, it must be stressed that the contested sign does not consist of the essential elements that make up the letter ‘E’, which is one vertical line with three horizontal lines. Although the contested sign includes lines, these are not depicted as a letter. The representation of these elements does not correspond with the usual shape of the letter ‘E’.

Whether the contested sign was described in the application form as a letter ‘E’ is not pertinent. For the assessment of a likelihood of confusion, the way in which the sign concerned is identified in the trade mark registry is irrelevant. 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).

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

Visually, the stylisation of the signs at issue is totally different, only having in common that the element ‘E’ of the earlier (1) mark (if written in upper case letters) and the contested sign are formed by straight lines. However, in the contested sign the figurative device has four sides and an opening on the right hand corner. The figure forms a rhombus like device. It must be emphasised 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.

All the remaining elements of the signs are different, namely the dash followed by the verbal element ‘PLUS’ in the earlier (1) mark and, as regards the earlier (2) mark, the dot followed by ‘plus’, all depicted in green.

In consequence, the individual coincidences between the signs will not be identifiable by the relevant public and they are insufficient on their own to substantiate visual similarity between the signs. Indeed, consumers will not artificially dissect the coinciding features between the signs. It must be noted that the average consumer will perceive the contested sign as a whole and will not make a detailed analysis of the sign. It is the immediate impression created by the sign that is of relevance and not a possible perception upon a detailed analysis.

As the signs at most only coincide in irrelevant aspects, it is concluded that the signs are not visually similar.

Aurally, the relevant public will pronounce only the verbal elements of the earlier marks while the contested sign, being a purely figurative sign, has no elements that could be pronounced. Therefore, it is not possible to compare the signs aurally.

Conceptually, although the public in the relevant territory will perceive the meanings of the earlier marks as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs do not coincide in any element or merely coincide in irrelevant aspects, they are dissimilar.

3. Global assessment, other arguments and conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness as claimed by the opponent. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The opposition must also fail insofar as based on Article 8(5) EUTMR because the signs are not identical or similar, which is a requirement under 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 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

Alicia BLAYA ALGARRA

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.