DECISION

of the Fourth Board of Appeal

of 19 October 2020

In case R 2699/2019-4

Telefónica Germany GmbH & Co. OHG
Georg-Brauchle-Ring 50 80992 München Germany	Opponent / Appellant

represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstraße 23, 80538 München, Germany

v

Shenzhen Emeet Technology Co.,LTD.
Unit 2C, Building A6, Guangming Science Park, Guanguang Road 3009, Guangming District Shenzhen Peoples Republic of China	Applicant / Defendant

represented by Metida Law Firm Zaboliene and Partners, Business center VERTAS Gynéjų str. 16, LT-01109 Vilnius, Lithuania

APPEAL relating to Opposition Proceedings No B 3 057 815 (European Union trade mark application No 17 884 309)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), C. Bartos (Rapporteur) and E. Fink (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 5 April 2018, SHENZHEN EMEET TECHNOLOGY CO.,LTD. (‘the defendant’) sought to register the sign

for the following list of services:

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. On 9 July 2018, Telefónica Germany GmbH & Co. OHG (‘the appellant’) filed an opposition against the EUTM applied for based on Article 8(1)(b) and (5) EUTMR.

3. The opposition was based on

1. German trade mark No 302015061444

E-Plus

registered on 30 May 2016 for, inter alia, on the following services on which the opposition was based:

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.

2. EUTM No 1 132 299

registered on 5 March 2002, and duly renewed, for inter alia on the following services on which the opposition was based

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.

4. The appellant claimed that its earlier trade mark mentioned above under paragraph 3b) enjoyed reputation for all services in Class 38 on which the opposition was based, and with respect to the earlier trade mark mentioned in paragraph 3a) only with respect to ‘telecommunication’ in Class 38.

5. The appellant submitted ample evidence to prove reputation of its earlier trade marks.

6. After being invited to do so pursuant to an request of the defendant, the appellant submitted ample evidence concerning the use of its earlier trade mark mentioned above under paragraph 3b)

7. By decision of 28 October 2019 (‘the contested decision’), the Opposition Division rejected the opposition since it considered that the signs were dissimilar, and therefore one condition for the application of Article 8(1)(b) and (5) EUTMR did not exist. Consequently, it was not necessary to deal with the question of proof of use.

Submissions and arguments of the parties

8. The appellant filed a notice of appeal followed by a statement of grounds, requesting to annul the contested decision and to reject the EUTM applied for.

9. It argued that the signs were highly similar. Contrary to the contested decision, the sign applied for is not a broken rhombus, but a slightly tilted ‘E’, perhaps lying on an upward pointing line. This interpretation is also in line with the Register, where the contested trade mark is listed as ‘E’ and not as ‘rhombus’. Furthermore, the defendant’s use clearly indicates that the sign is an ‘E’, since it uses it on its home page in the following way

10. The actual use of the EUTM applied for shows what the extended stroke on the right side stands for. It is the stylized reference to the following ‘M’ of ‘eMeet’. That connection makes it even more absurd that the relevant public allegedly perceives the contested sign as a rhombus. The perception as ‘E’ represents the immediate perception of the public, when confronted with the sign, whereas the perception of a rhombus represents a perception for which a detailed analysis is required.

11. Furthermore, the appellant argued on the comparison of the services, and concluded that both Article 8(1)(b) and (5) EUTMR were applicable.

12. The defendant submitted its observations and requested that the appeal be dismissed.

13. It basically argued that Opposition Division correctly stated 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’.

Reasons

14. The appeal is admissible, but not well founded.

1. The Opposition based on the earlier German trade mark mentioned above under paragraph 3a)

1. Article 8(1)(b) EUTMR

15. Pursuant to Article 8(1)(b) EUTMR, upon opposition of the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of the identity or similarity of the signs and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

1. The relevant public and its attention

16. The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17 et seq.). The consumer’s level of attention is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

17. As the earlier trade mark is a German trade mark, the relevant territory for analysing the likelihood of confusion is Germany

18. The services are addressed to the general public as well as specialists; consequently, the level of attention varies from average to high.

2. The comparison of the signs

19. The comparison of the conflicting signs in relation to the visual, aural and conceptual similarities between the signs in question has to take into account the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

20. Accordingly, the assessment of the similarity between two signs means more than taking just one component of a composite sign and comparing it with the other sign. On the contrary, the comparison must be made by examining each of the signs in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite sign may not, in certain circumstances, be dominated by one or more of its components (12/09/2012, T‑295/11, duschy, EU:T:2012:420, § 57). It is only if all the other components of the sign are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (20/07/2007, C-193/06P, Quicky, EU:C:2007:539, § 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that sign which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that sign (20/07/2007, C-193/06P, Quicky, EU:C:2007:539, § 43). With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (23/10/2002, T-6/01, Matratzen Concord, EU:T:2002:261, § 35; 12/09/2012, T‑295/11, duschy, EU:T:2012:420, § 58).

21. As it cannot be excluded that consumers, when perceiving a verbal sign, will break it down into elements which suggest a concrete meaning or which resemble words known to the consumer (13/02/2007, T-256/04, EU:T:2007:46, § 57), it also cannot be excluded that the consumer may, when perceiving a figurative sign, break it down into elements which suggest a concrete meaning or which resemble known letters or words.

22. However, it is important to recall that the consumer will not artificially dissect a sign in various elements (06/03/2015, T-257/14, BLACK JACK, EU:T:2015; 141, § 39). Such dissection is only possible if there are clear indications on how to dissect a sign.

23. In any case, the comparison must be based with respect to the perception of the relevant public and, contrary to the arguments of the appellant, any description in the application cannot be taken into consideration since it reflects only how the proprietor sees its trade mark but not how the relevant public will perceive it; by the same token, any intention of the proprietor when creating its sign cannot be taken into consideration (10/11/2011, T-22/10, Darstellung eines Buchstabens auf einer Hosentasche, EU:T:2011:651, § 62).

24. Furthermore, the signs must be compared as they appear in the register and not in accordance with any use.

25. As signs consisting of single letters are usually expressed in a stylized or even a very stylized form, it is of utmost importance to, before comparing the signs, assess if an at least non-negligible part of the relevant public (20/07/2017, T‑521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69) will indeed recognise the sign as a single letter (20/09/2019, T-67/19, DOKKIO, ECLI:EU:T:2019:648, § 30).

26. sign applied for

    The sign applied for consists of a rhombus-like figure, where the right corner remains open and the base corner stands on a platform. Furthermore, there is a centre line which falls from the middle of the upgoing outer line of the rhombus nearly to the middle of the lower upgoing outer line. Nothing allows the conclusion that that sign will be perceived by the public, irrelevant of whether it is the general public or any specialist, immediately and without any further reflection as the capital letter ‘E’ when confronted with it for the first time. It might be true, as the appellant indicates, that the public will neither see any rhombus. However, this is not of importance. What is important is the fact that it will not be perceived as the capital letter ‘E’. The capital letter ‘E’ is characterized by its vertical bar to which, on its right side, three horizontal bars are connected; most importantly, it has no second vertical bar or line creating the impression of a rectangular or square.

27. The earlier sign consists of the verbal element ‘E-Plus’.

28. Visually, the signs are dissimilar. They do not have any similarities in common.

29. As regards the phonetic comparison of signs, it is unlikely that the consumer will attempt to pronounce the contested sign, since signs consisting only of figurative elements will normally not be pronounced (07/10/2012, T-424/10, Eléphants dans un rectangle, EU:T:2012:58, § 45) and therefore, a comparison of the signs in this respect is excluded (22/09/2011, T-174/10, A avec deux motifs triangulaire, EU:T:2011:519, § 32). At the very best, because of the very particular graphic design of the signs, consumers will tend to describe the sign applied for and not to pronounce it, which again excludes a phonetic comparison of the signs (22/09/2011, T-174/10, A avec deux motifs triangulaire, EU:T:2011:519, § 32). In any case, the public will not describe it as a stylized capital letter ‘E’.

30. Since neither of the signs has any concrete meaning, they are not similar.

31. Consequently, the signs are dissimilar.

3. Global assessment of likelihood of confusion

32. In accordance with the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. The global assessment implies some interdependence between the factors taken into account and in particular the similarity between the signs and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the signs, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

33. Since one of the conditions of the application of Article 8(1)(b) EUTMR is missing, the opposition must fail insofar it is based on this ground.

2. Article 8(5) EUTMR

34. The application of Article 8(5) EUTMR is subject to the following cumulative conditions: first, that the earlier sign is identical or similar to the sign applied for; secondly, that the earlier trade mark has a reputation in the territory in which it is registered; thirdly, that there is a risk that the use of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark; and fourthly, that the use of the younger trade mark would be without due cause. These conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 30).

35. Since the signs are dissimilar, one condition of the application of Article 8(5) EUTMR is not applicable, and the opposition must fail insofar as it is based on this ground.

2. The Opposition based on the earlier German trade mark mentioned above under paragraph 3b)

36. earlier sign

    This earlier trade mark is figurative consisting of the verbal element ‘e plus’ in green letters in a slightly stylized font. Since the verbal element is the most distinctive element of this trade mark, the above reasoning concerning the comparison of the signs is also applicable in this case.

37. Consequently, the signs, are for the reasons set out above, dissimilar, and the opposition, insofar as it is based on this trade mark and Article 8(1)(b) and (5) EUTMR, must also fail.

3. Result

38. The appeal is dismissed

Costs

39. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the appellant, as the losing party, must bear the defendant’s costs of the appeal proceedings.

Fixing of the costs

40. The costs of the appeal proceedings the appellant must reimburse to the defendant are fixed at the level of EUR 550.

41. As to the opposition proceedings, the Opposition Division ordered the appellant to bear the defendant’s representation costs which were fixed at EUR 300. This decision remains unaffected.

42. The total amount for both proceedings is therefore EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the appellant to bear the costs of the defendant in the opposition and appeal proceedings.

3. Fixes the amount to be reimbursed by the appellant to the defendant at the level of EUR 850.

Signed D. Schennen

Signed C. Bartos

Signed E. Fink

Registrar: Signed H.Dijkema