OPPOSITION No B 3 071 157

Dela Coöperatie U.A., Oude Stadsgracht 1, 5611 DD Eindhoven, Netherlands (opponent), represented by Taylor Wessing N.V., Kennedyplein 201, 5611 ZT Eindhoven, Netherlands (professional representative)

a g a i n s t

Art Dynasty SRL, str. Colinei, nr. 26, bl. A1, ap. U17, 400520 Cluj-Napoca, Romania (applicant), represented by Acta Marque Agentie de Proprietate Intelectuala SRL, Str. Eugen Brote nr. 8, judetul Cluj, 400075 Cluj-Napoca, Romania (professional representative).

On 12/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 157 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 950 304 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 17 950 304 for the figurative mark .

The opposition is based on, inter alia, European Union trade mark registration No 15 782 295 for the word mark ‘Fello’. 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.

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 registration No 15 782 295.

a) The goods and services

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

Class 9: Recorded computer programs; recorded computer programs for creating a shared agenda for synchronising the daily informal care of a family member; computer software; computer software for creating a shared agenda for synchronising the daily informal care of a family member; mobile apps; mobile applications for creating a shared agenda for synchronising the daily informal care of a family member; data, documents, information, photographs, video, audio, text and other media or multimedia, all being electronically recorded or downloadable from the internet or other communications networks; electronic publications stored on computer media; downloadable electronic publications.

Class 35: Advertising; business management; business administration; office functions; mediation in the establishment of business contacts via the internet (public relations); business administration services in the field of healthcare; clerical services for making appointments; office functions for making appointments for the daily informal care of a family member; scheduling of meetings; secretarial services; services in the field of outsourcing administrative and facility processes and functions by others; employment agencies; personnel services; human resources management; accounting; payroll preparation; payrolling; professional business consulting; promotion of goods and services for others; presentation of companies on the internet and other media; providing and rental of advertising space; mediation of advertising; business intermediary services; business mediation between informal carers and suppliers in the care sector; negotiating and concluding commercial transactions for others; provision of commercial information; accounting; administrative processing of purchase orders; services of databases containing commercial and advertising information; compilation of statistics; market prospecting, research and analysis; opinion polling; compilation of information into computer databases; data file administration; organisation of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

Class 38: Telecommunications; providing of and providing access to internet websites and mobile applications for creating a shared agenda for synchronising the daily informal care of a family member; providing access to telecommunication networks; providing access to global computer networks and databases; providing multiple-user access to global computer information networks; providing access to platforms and portals on the internet; providing access to electronic information, communication and transaction platforms on the internet; providing access to online forums and chat rooms; transmission and connection services; data tranmission; transferring, distribution, sending and receiving of data, messages, sounds, images and documents; electronic transmission of digital files and other data; digital transmission of data via the internet; providing access to search engines; providing of mobile and fixed telecommunication channels; communication services provided electronically; telephone services; electronic mail; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not via electronic channels, including the internet.

Class 42: Scientific and technological services and research and design relating thereto; medical research; industrial analysis and research services; design and development of computer hardware and software; design, development, programming, installation, maintenance, updating, upgrading and rental of computer software; device, development, computer programming, the installation, servicing, updating, upgrading and rental of computer software for creating a shared agenda for synchronising the daily informal care of a family member; hosting services and software as a service; hosting and providing computer software (SaaS) for creating a shared agenda for synchronising the daily informal care of a family member; design and development of mobile applications; hosting of mobile applications and websites; hosting of platforms and portals on the internet; hosting of communication and transaction platforms on the internet; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet.

Class 44: Medical services; nursing services; home-visit nursing care; informal care; ambulant medical care; medical assistance; medical services; medical and paramedical care; nursing care and other medical services, and services in the field of hygienic and beauty care for people, including in the context of home care and informal care; respite care services in the nature of nursing aid services; psychological, psychiatric and psychotherapeutic services; health centers; pharmaceutical services; ergotherapy and physical rehabilitation; providing facilities for long-term care in sheltered accommodation; convalescent home services; rest homes; nursing centers; including information and advice relating to all the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

Class 45: Personal and social services rendered by others to meet the needs of individuals, namely offering online social networking for creating a shared agenda for synchronising the daily informal care of a family member; on-line social networking services; (online) dating services; on-line social networking services; dating services; non-therapeutic counselling to meet the needs of individuals; chaperoning; foster care; shopping for the benefit of others; house sitting; baby sitting; pet sitting; letting out of pets; burial services; marriage counseling and coaching; personal fashion advice; dating services; dating services; legal services; security services for the protection of goods, buildings and persons; providing patient advocate services to hospital patients and patients in long term care facilities; lobbying, not for commercial purposes, in connection with collaborating with suppliers in the care sector; consultancy and information relating to the aforesaid services; all the aforesaid services whether or not via electronic channels, including the internet.

The contested goods and services are the following:

Class 9: Educational software; science software; computer software applications, downloadable; software for remote diagnostics; computer software for creating dynamic websites; personal computers incorporating dietary aid computer software; downloadable computer software for remote monitoring and analysis; application software; mobile apps; application software for mobile phones; computer application software; downloadable mobile applications for the transmission of information; downloadable mobile applications for the management of information; downloadable mobile applications for the management of data; downloadable mobile applications for the transmission of data; software and applications for mobile devices; downloadable mobile applications for use with wearable computer devices; computer software for advertising.

Class 35: Digital advertising services; publicity and sales promotion services; advertising; online advertisements; advertising services provided via the internet; advertising, marketing and promotional services; on-line advertising on a computer network.

Class 42: Software development, programming and implementation; software creation; hosting of mobile applications; hosting of multimedia applications; hosting of interactive applications; providing temporary use of web-based applications; development of computer software application solutions; hosting of computerized data, files, applications and information; design and development of software in the field of mobile applications; advice and consultancy in relation to computer networking applications; programming of multimedia applications; rental of application software; programming of software for online advertising.

In relation to the parties’ references to their actual businesses it is to be noted that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

Contested goods in Class 9

The contested goods in this class are either identically contained in the opponent’s list of goods in Class 9 (e.g. mobile apps) or are included in, or overlap with, the opponent’s broader categories of computer software or mobile apps. Therefore, they are identical.

Contested services in Class 35

The contested services in this class are identical to the opponent’s advertising in Class 35, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include the contested services.

Contested services in Class 42

The contested software development, programming and implementation; software creation; development of computer software application solutions; design and development of software in the field of mobile applications; programming of software for online advertising are identical to the opponent’s design, development, programming, installation, maintenance, updating, upgrading of computer software in Class 42, because the opponent’s services include, are included in, or overlap with, the contested services.

The contested hosting of mobile applications; hosting of multimedia applications; hosting of interactive applications are identical to the opponent’s hosting of mobile applications in Class 42, either because they are identically contained in both lists or because the opponent’s services include or overlap with, the contested services.

The contested providing temporary use of web-based applications and rental of application software overlap with the opponent’s rental of computer software in Class 42. Therefore, they are identical.

The contested hosting of computerized data, files, applications and information software overlap with the opponent’s hosting of platforms and portals on the internet in Class 42. Therefore, they are identical.

The contested advice and consultancy in relation to computer networking applications overlap with the opponent’s consultancy relating to design and development of mobile applications in Class 42. Therefore, they are identical.

The contested programming of multimedia applications overlaps with the opponent’s computer programming in Class 42. 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.

In the present case, the goods and services found to be identical are directed at the public at large and business customers with specific professional knowledge or expertise.

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

c) The signs

Fello
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.

According to the opponent, the earlier mark, ‘Fello’, refers to the English word ‘fellow’ or fellowship’, making it conceptually similar to the figurative element of the contested sign. The applicant pointed out that the verbal element ‘FELLO’ has no meaning as such in English, but is used as ‘a truncated abbreviation’ of the word ‘FELLOW’. The applicant further argued that the verbal element ‘Wello’, of the contested sign, has no meaning as such in English, but is used colloquially with the meaning of ‘well hello’. In support of this argument the applicant submitted an extract from https://www.urbandictionary.com/define.php?term=Wello with this definition of ‘WELLO’. However, no evidence was submitted to support the assertion that ‘FELLO’ refers to ‘FELLOW’. Furthermore, the extract submitted by the applicant does not indicate that the word is used in the European Union with this meaning. At least those consumers living in territories with official languages other than English — even if they have knowledge of English — will not necessarily associate ‘FELLO’ with ‘FELLOW’, or know that ‘WELLO’ is used in casual conversations with the meaning of ‘well hello’. Furthermore, the pronunciation of the signs will vary, depending on the different pronunciation rules in different parts of the relevant territory. Nevertheless, at least for a part of the relevant consumers (e.g. German or Polish speakers) the signs’ initial letters, ‘F’ and ‘W’, are quite close phonetically, both being articulated by forcing air through a channel created by placing the lower lip against the upper teeth. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public for whom the words ‘FELLO’ and ‘WELLO’ have no meaning and are distinctive, and who pronounce the letters ‘W’ and ‘F’ in a similar manner.

The earlier mark is a single verbal element and has no visually dominant elements.

The applicant argued that the shorter a sign is, the more easily the public is able to perceive all its single elements, and that consumers generally tend to focus on the beginning of a sign. However, these principles should not be applied automatically without considering all the circumstances. In addition, although the verbal elements of the signs are not very long, five-letter words are not considered short either.

The applicant drew attention to the figurative aspects of the contested sign. In this respect it is noted that when a sign consists of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). The blue letters of the contested sign are stylised to resemble handwriting, but this does not appear to be very elaborate. It will not attract the consumers’ attention away from the verbal element ‘Wello’. The figurative element of the contested sign, representing silhouettes of people in blue and white is not negligible. However, although it is placed before the verbal element of the contested sign, its depiction is not more striking than that of the verbal element ‘Wello’, which is of a comparative height but longer than the figurative element. Therefore, none of the elements of the contested sign is visually dominant (eye-catching).

As to the previous decisions of the Office referred to by the applicant, each of these cases has its own particularities which were taken into account when deciding on them. The mere fact that cases may resemble one another in certain aspects is not, in itself, sufficient to render them comparable.

Visually, the signs share similarities between the verbal elements ‘FELLO’ (the only element of the earlier mark), and ‘Wello’ (the only verbal element of the contested sign). Both have five letters. They coincide in four letters, ‘ELLO’, and differ in their first letters, ‘F’ of the earlier mark and ‘W’ of the contested sign. Furthermore, the signs differ in the figurative aspects of the contested sign, described above. Since the similarities concern the only element of the earlier mark and the only verbal element of the contested sign, while the differences are confined to elements and aspects with less impact, it is considered that the signs are visually similar at least to a low degree.

Aurally, as far as the part of the public taken into account for the comparison is concerned, the pronunciation of the signs coincides in the sound of the string of letters ‘ELLO’ and differs in the sound of their initial letters ‘F’ v ‘W’. However, this difference is not striking as, although ‘F’ is a voiceless consonant and ‘W’ is voiced, both are pronounced with the lower lip touching, or close to, the upper teeth. Furthermore, the signs have the same length and vowel structure. Therefore, they are pronounced with the same rhythm and intonation. Consequently, the signs are aurally highly similar.

Conceptually, although the contested sign contains a figurative element representing silhouettes of people, the verbal elements of both signs have no meaning for the part of the relevant public taken into consideration. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as a result of its long standing and intensive use. However, the annexes attached to the opponents observations — namely extracts from trade mark registers and a copy of a letter sent to the applicant with a request to withdraw the application — only provide information related to the earlier mark’s registration and the contested sign’s application and demonstrate that the opponent took measures in order to reach agreement before filing the opposition notice. They do not provide information about the exposure of the earlier mark to the public. The printouts from the website https://getfello.com, where the goods are presented, are not in English which is the language of these proceedings. In any event, without complementary information as to the actual use of the website by potential and relevant consumers, or advertising and sales figures, it cannot be inferred from such printouts that the relevant public in the relevant territory is aware of the mark. Therefore, these annexes are obviously insufficient to prove that the earlier trade mark acquired a high degree of distinctiveness through its use. The opponent did not file any other evidence in order to prove this 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 goods and services in question from the perspective of the part of the public taken into account. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods and services are identical. The signs are visually similar at least to a low degree, aurally highly similar and, for the part of the public taken into account for the comparison of the signs, only the figurative element of the contested sign has a concept. However, as explained above, this element has less impact.

The degree of distinctiveness of the earlier mark is normal and the public’s level of attention varies between average and higher than average.

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).

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).

Therefore, given that the similarities are between the only element of the earlier distinctive mark, ‘FELLO’, and the verbal element ‘Wello’ of the contested sign, and that the additional differentiating elements have less impact, the consumers on which the assessment is focused, even if their attention is heightened, could be led to believe that the identical goods and services bearing the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the relevant public under assessment. 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 15 782 295. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 15 782 295 leads 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Irena LYUDMILOVA LECHEVA

Justyna GBYL

Arkadiusz GÓRNY

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.