OPPOSITION No B 3 072 024

O2 Worldwide Limited, 20 Air Street, London, W1B 5AN, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, Cambridge, CB25 9PD, United Kingdom (professional representative)

a g a i n s t

Hyperloop Transportation Technologies Inc., 11844 Jefferson Blvd, 90230 Culver City, United States of America (applicant), represented by AB Asesores, Calle Bravo Murillo, 219 - 1º B, 28020 Madrid, Spain (professional representative).

On 19/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 024 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 949 503 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 949 503 for the word mark ‘XO2’. The opposition is based on, inter alia, European Union trade mark registrations No 11 679 594 and No 9 279 456, both for the word mark ‘O2’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 11 679 594 and No 9 279 456.

a) The goods and services

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

Earlier mark 1: EUTM No 11 679 594 ‘O2’ (word)

Class 9: Computer software.

Earlier mark 2: EUTM No 9 279 456 ‘O2’ (word)

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware and software.

The contested goods and services are the following:

Class 9: Software platform to improve collaborative work and crowdsourcing companies projects management.

Class 42: Scientific and technological services related to mobility and transport; research and development services related to mobility and transport; design and development of software.

Contested goods in Class 9

Software refers to programs and procedures required to enable a computer to perform a specific task, while software platforms are combinations of various kinds of software (device drivers, operating system, etc.) which in total allow a user to interact with the computer and its peripherals.

Bearing in mind the above definitions, the contested goods in this Class are either included in the broad category of the opponent’s computer software, or at the very least these two categories overlap (25/03/2020, R 1251/2019‑4, Ciaobnb / Airbnb et al., § 17). Therefore, they are identical.

Contested services in Class 42

The contested design and development of software is identically contained in the opponent’s list of services of the opponent’s earlier mark 2.

The opponent’s scientific and technological services and research and design relating thereto are various scientific and technology-related activities which are concerned with research and experimental development and contribute to the generation, dissemination and application of scientific and technical knowledge. These services are mainly provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities. In particular, they are services provided by engineers who undertake evaluations, estimates, research and reports in the scientific and technological fields. These services of the earlier mark cannot be clearly separated from the contested research and development services related to mobility and transport. As these categories substantially overlap, they are considered identical.

The contested scientific and technological services related to mobility and transport are included in the broad category of the opponent’s scientific and technological services and research and design relating thereto. Therefore, they are identical.

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.

Although the opponent’s computer software in Class 9 target both the public at large and the professional public, the contested goods and services found to be identical are highly specialised and target exclusively the professional public. As stated by the Court, the relevant public, for the assessment of the likelihood of confusion, is composed of users likely to use both the goods and services covered by the earlier mark and the products covered by the mark applied for that were found to be identical or similar (01/07/2008, T‑328/05, Quartz, EU:T:2008:238, § 23; 10/07/2009, C‑416/08 P, Quartz, EU:C:2009:450). The only overlapping public is the professional public and, therefore, the examination will continue for this public.

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

c) The signs

O2	XO2
Earlier trade marks 1 and 2	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 two earlier marks are word marks ‘O2’ and the contested sign is a word mark ‘XO2’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the contested sign is depicted in upper- or lower-case characters, or in a combination thereof. For the same reasons, word marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

It is plausible, as argued by the opponent, that the earlier marks, ‘O2’, may be perceived by a part of the relevant public as the chemical symbol for oxygen in its molecular form, given that the ‘O2’ formula is well known (02/02/2016, R 625/2015‑2, EO2 / O2 et al., § 27; 20/08/2018, R 2083/2017‑2, 3b (fig.) / O2 et al., § 69; R 1784/2017‑2, O2CHAIR MORE AIR, LESS STRESS (fig.) / O2 (et al.). § 22). Nevertheless, an understanding of chemical formulas cannot be expected from all relevant consumers and, therefore, for another part of the public the earlier marks will be meaningless (06/03/2014, R 1402/2013‑1, O2 (fig.), § 21; 14/04/2020, R 1033/2019‑2, O1 (fig) / O2 (fig.) et al., § 66). The Opposition Division will focus the examination on a part of the public for whom ‘O2’ is meaningless and inherently distinctive to an average degree.

The applicant argued that the letters ‘XO’ in the contested sign will be associated by the English-speaking part of the public with a way of expressing sincerity, faith, love or good friendship at the end of a written letter, e-mail or SMS text message. However, ‘XO’ is not a commonly understood term for sincerity, faith, love or good friendship, and the applicant did not provide any evidence to this effect. As follows from Article 95(1) EUTMR, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. Even if these assertions were true, the applicant did not explain (nor prove) why an association with these emotions and feelings should arise in the context of the specialised goods and services and the professional public, as the one at hand. In addition, the applicant did not argue that such an association would also apply to the non-English-speaking public. In the Opposition Division’ view, such an association is highly unlikely in both these scenarios. Moreover, the contested sign is not composed solely of the letters ‘XO’, but of ‘XO2’ which does not have any meanings as a whole. As correctly argued by the applicant, consumers normally perceive a trade mark as a whole and do not proceed to analyse its various details and the Opposition Division sees no reason for the public to split the contested sign into ‘XO’ and ‘2’.

The applicant also argued that ‘XO2’ could be associated with ‘2017 XO2’, a sub-kilometre asteroid and near-Earth object. Although it cannot be ruled out that a part of the public could perceive such a reference, this would, however, apply to only a very small portion of the public (those with a special interest in astronomy), while the majority would not see this association.

The Opposition Division also disagrees with the opponent’s suggestion that the letter ‘X’ at the beginning of the contested sign will be seen as an abbreviation of either ‘extreme’, ‘extra’ or ‘excellent’. This claim remains unproven and is highly unlikely.

In the absence of any compelling arguments or evidence to the contrary, the Opposition Division considers that the contested sign will be seen as meaningless and inherently distinctive to an average degree by at least a substantial part of the relevant public. The Opposition Division will limit the examination to this part of the public.

According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30).

Visually, the earlier marks are entirely included in the contested sign as its second and third characters, ‘*O2’. The contested sign differs in its first letter ‘X’ which has no counterpart in the earlier marks. Although, in principle, the first elements of a word may be more likely to catch the consumer’s attention, in the present case the differing beginning (one character) is shorter than the coinciding part (two characters). Therefore, the fact that the contested sign contains the additional letter ‘X’ at its beginning does not prevent the consumers from noticing the common element ‘O2’. For this reason, and despite the short length of the signs, the Opposition Division disagrees with the applicant that the signs are visually dissimilar. As a result of the common element between the signs the relevant public will perceive a certain visual similarity between the marks at issue (23/10/2015, T‑96/14, VIMEO / MEO (fig.) et al., EU:T:2015:799, § 33, 35) which may be described as low.

Aurally, despite the difference in the contested sign’s first letter, ‘X’, the coinciding characters ‘O’ and ‘2’ will be pronounced separately and identically irrespective of the different pronunciation rules in different parts of the relevant territory, for example, o-two in English, o-zwei in German, o-dwa in Polish or o-dos in Spanish. The differing letter ‘X’ will either be pronounced as a separate syllable (e.g. /ɛks/ in English) at the contested sign’s beginning or it will be pronounced, by at least a part of the public, together with the subsequent letter ‘O’ in one syllable as ‘XO’. In the latter case the differing letter ‘X’ would be less audible, and the contested sign would be pronounced in two syllables like the earlier marks.

Indeed, the fact that the earlier marks are phonetically included in full in the contested sign creates an aural similarity between the marks (26/01/2006, T‑317/03, Variant, EU:T:2006:27, § 47). A different number of syllables alone does not rule out similarity (17/04/2008, C‑108/07 P, Ferro, EU:C:2008:234, § 48; 28/10/2010, T‑131/09, Botumax, EU:T:2010:458, § 39). Therefore, the applicant’s claim that the signs are aurally dissimilar cannot be accepted and the aural similarity between the signs is at least low.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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 marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public to which this examination is limited. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In cases where the goods and services are identical, as in the present case, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53). Account is also 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 signs are visually similar to a low degree and aurally similar to at least a low degree, while a conceptual comparison is neutral for the part of the public to which this examination is limited. The relevant public is composed of the professional public displaying an average to high degree of attention.

It is important to note that the earlier marks ‘O2’ are entirely included in the contested sign, which differs in only one letter. Although located at the beginning of the contested sign, the difference in the letter ‘X’ does not allow for sufficient difference between the signs. In relatively short signs, the elements at the end and centre of a word are as important as the initial elements (16/09/2006, T‑221/06, Bebimil, EU:T:2009:330, § 47). Although ‘O2’ does not have an independent distinctive role within the contested sign, it still contributes in a significant way to the overall impression produced by it as it makes up two thirds of the sign (by analogy 23/10/2015, T‑96/14, VIMEO / MEO (fig.) et al., EU:T:2015:799, § 68), which results in a certain degree of similarity between the signs, as explained above.

Moreover, a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Therefore, the lower degree of similarity between the signs is compensated by the identity of the goods and services.

Contrary to the applicant’s argument, consumers previously exposed to the earlier marks, who are now approached by the applicant and offered identical goods and services under the contested sign, might reasonably assume that there is some business connection between the applicant and the opponent (14/04/2020, R 1033/2019‑2, O1 (fig) / O2 (fig.) et al., § 82).

Although it is true that in the case of word signs which are relatively short, even a difference consisting of a single consonant can preclude a likelihood of confusion (23/05/2007, T‑342/05, Cor, EU:T:2007:152), this principle does not apply automatically. There are cases where the Court found a likelihood of confusion between short signs differing in one letter (23/10/2002, T-388/00, ELS, EU:T:2002:260; 17/09/2008, T‑10/07, FVB, EU:T:2008:380). It follows that each case must be assessed on its own merits.

In the present case, the contested sign may be regarded globally as similar to the earlier marks. Taking into account the low degree of visual and (at least low degree of) aural similarity between the conflicting signs, the identity between the goods and services and the earlier marks’ normal degree of distinctiveness, the overall impression produced by the marks could lead the public to believe that the goods and services come, at the very least, from undertakings that are economically linked.

Consequently, and contrary to the applicant’s view, there is a likelihood of confusion between the signs, even for the goods and services with regard to which the consumers show a high degree of attention, on the part of the professional public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to consider the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 11 679 594 and No 9 279 456. It follows that the contested trade mark must be rejected in its entirety.

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

As the earlier rights mentioned above lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

COSTS

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

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

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

Liliya YORDANOVA

Jakub MROZOWSKI

Reiner SARAPOGLU

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.