OPPOSITION No B 3 071 837

Simpel.nl B.V., Cronenburg 150, 1081 GN, Amsterdam, Netherlands (opponent), represented by A.R.T., Odle De Boelelaan 30, 1083 HJ, Amsterdam, Netherlands (professional representative)

a g a i n s t

Shenzhen Createband Co. Ltd., 19/F Building 4 Yiluan Mansion, Manjinghua, Longteng Community, Xixiang Avenue, Bao'an District Shenzhen Guangdong, People’s Republic of China (applicant), represented by Albright IP Limited, County House Bayshill Road, Cheltenham GL50 3BA, United Kingdom (professional representative).

On 23/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 837 is upheld for all the contested goods and services, namely

Class 9: Computer terminals; Micro-computers; Computer programs; Wearable computers; Computer software for wireless content delivery.

Class 35: Outdoor advertising; Advertising; Marketing.

Class 38: Message sending; Communications by telephone; Communications by cellular phones; Communications by computer terminals; Computer aided transmission of messages and images; Transmission of digital files; Providing online forums; Streaming of data.

2. European Union trade mark application No 17 950 517 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 950 517 namely against some of the goods and services in Classes 9, 35 and 38. The opposition is based on, inter alia, the Benelux trade mark registration No 1 011 929 . The opponent invoked Article 8(1)(b) and, in relation to a trade name ‘SIMPEL’ used in the course of trade in the Netherlands, Article 8(4) 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 Benelux trade mark registration No 1 011 929.

a) The goods and services

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

Class 9: Telecommunication and computer (network) apparatus; wireless phones.

Class 35: Advertising; intermediary services regarding sale of (mobile) phones and subscriptions.

Class 38: Telecommunication; fax-, telephone, e-mail-and wireless services; lease of apparatus and connections for telecommunication.

The contested goods and services are the following:

Class 9: Computer terminals; Micro-computers; Computer programs; Wearable computers; Computer software for wireless content delivery.

Class 35: Outdoor advertising; Advertising; Marketing.

Class 38: Message sending; Communications by telephone; Communications by cellular phones; Communications by computer terminals; Computer aided transmission of messages and images; Transmission of digital files; Providing online forums; Streaming of data.

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 computer terminals; micro-computers; wearable computers are included in the broad category of, or overlap with, the opponent’s telecommunication-and computer (network) apparatus. Therefore, they are identical.

The contested computer programs; computer software for wireless content delivery are similar to the opponent’s telecommunication-and computer (network ) apparatus as they are complementary. They also have the same distribution channels, target the same public and their commercial origin usually overlaps.

Contested services in Class 35

The contested Outdoor advertising is included in the broad category of the opponent’s advertising. Therefore, they are identical.

Advertising is identically contained in both lists of services.

The contested Marketing includes, as a broader category the opponent’s advertising. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 38

The contested message sending; communications by telephone; communications by cellular phones; communications by computer terminals; computer aided transmission of messages and images; transmission of digital files; providing online forums; streaming of data are included in the broad category of, or overlap with, the opponent’s telecommunication. 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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the Benelux countries.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The verbal elements of the signs are not meaningful in certain territories, for example in those countries where French is spoken. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.

Therefore, for this part of the relevant public, the meaningless terms ‘SIMPEL’ of the earlier mark and ‘SIMBLE’ of the contested sign are normally distinctive.

The figurative element of the earlier mark will be perceived as two fingers with faces. As it has no clear and direct meaning in relation to the relevant goods and services it is normally distinctive.

The horizontal line over the letter ‘M’ in the contested sign will be perceived as a simple geometrical shape or a hyphen and as such it has minor impact on the perception of the sign.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their beginnings ‘sim’. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The signs also show some similarities in their endings as they contain the same letters only in reverse order ‘el/le’ an in the letters ‘p’ and ‘b’ that are also visually similar.

However, they differ in their middle letters ‘p’/‘b’ and in the figurative element of the earlier mark and their overall graphic representation. When signs consist 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).

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SIM’, present identically in both signs. The pronunciation differs in the sound of the final letters ‛PEL’ vs ‘BL’ however the sounds ‘P’ and ‘B’ show certain aural similarity. The final letter ‘E’ of the contested sign will be mute in French.

Therefore, the signs are similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the earlier mark as explained above, the other sign has no meaning in that territory. 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 mark has been extensively used and enjoys 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 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

The goods and services are partly identical and partly similar. They target the public at large and professionals. The degree of attention varies from average to high. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually and aurally similar to an average degree. Conceptually the signs are not similar. However, this conceptual difference lies in a figurative element which has less impact on the consumer as explained above.

The signs have five letters in common out of six whereby three are at the same positions and moreover form the beginnings of the signs and two final ones are in reverse order. The main difference lies in the middle of the signs which can easily go unnoticed.

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).

Considering all the above, there is a likelihood of confusion on the part of the French-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 Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 1 011 929. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

As the earlier right Benelux trade mark registration No 1 011 929 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 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(4) 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Anna ZIOŁKOWSKA

Katarzyna ZANIECKA

Kieran HENEGHAN

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.