OPPOSITION No B 3 072 159

Fifo Wireless, Inc., Suite 210, 10900 NW 21 St, 33172 Miami, Florida, United States of America (opponent), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)

a g a i n s t

Triple-9 B.V., Houtrustweg 457, 2583 LL, 's-Gravenhage, Netherlands (applicant), represented by Merkenspot, Savannahweg 17, 3542 AW, Utrecht, Netherlands (professional representative)

On 10/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 159 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 961 112 for the word mark ‘Lyfo’. The opposition is based on international trade mark registration No 1 125 650 designating the European Union (figurative).

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark 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 goods 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 goods and services

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

Class 9: Audio speakers; battery chargers; cases for mobile phones; devices for hands-free use of mobile phones; radio transmitters; signal splitters for electronic apparatus; specialty holster for carrying cellular phones, pagers, and/or personal digital assistants.

The contested goods and services are the following:

Class 9: Mobile apps.

Class 38: Telecommunication services.

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 mobile apps consist of a specific type of software, which is installed on mobile phones. This software is used for the purpose of having the telephone perform certain actions, and also to be able to use devices connected to the telephone. Therefore, these contested goods are similar to the opponent´s devices for hands-free use of mobile phones, since these devices are meant to be used with mobile phones and frequently need a specific software (e.g. mobile app) in order to work properly.

Contested services in Class 38

Consumers use the opponent´s radio transmitters when they want to communicate with others. The contested telecommunication services allow people to communicate with one another by remote means. There is a link between these goods in Class 9 (telecommunication apparatus) and the opponent’s services in Class 38 (telecommunication services). They are similar because they are complementary and, even though their nature is different, their purposes, relevant public and distribution channels are the same.

2. 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 similar are directed at the public at large and also at professionals.

The degree of attention is deemed to vary from average to high, since some of the goods and services involved can be expensive and not frequently purchased.

3. The signs

	Lyfo
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

In the present case, the parties submit different arguments relating to the possible concepts that could be perceived in the verbal elements ‘FIFO’ and ‘Lyfo’. In this regard, the opponent argued the following:

“FIFO and LIFO accounting are methods used in managing inventory and financial matters involving the amount of money a company has to have tied up within inventory of produced goods, raw materials, parts, components, or feed stocks”.

The applicant argued the following:

(…)

Even if part of the public could be aware of the accounting terminology described by the opponent in relation to the word ‘FIFO’, and it cannot be totally ruled out that part of that public could relate ‘Lyfo’ with the accountability acronym ‘LIFO’, the Opposition Division considers that it is likely that in relation to the goods and services herein involved, another part of the public will perceive the words ‘FIFO’ and ‘Lyfo’ as meaningless terms, of average distinctive character. Since from this perspective, the signs present less differences (i.e. from the conceptual perspective), the Opposition Division will first examine the opposition in relation to the part of the public for which both signs are meaningless and of average distinctive character, as this is the most advantageous scenario for the opponent.

The earlier mark contains a figurative element formed by what seems to be the point of an arrow/triangular shape partially covering a circular shape, which could be perceived as a depiction of a moon. They convey no meaning in relation to the goods in question and are, therefore, of average distinctive character.

The earlier mark does not have any element more dominant (visually eye-catching) than others.

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. It is relevant to note that in this case the differences are found at the beginning of the verbal elements in the marks.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the string of letters ‘-FO’. They differ in their beginnings ‘FI-’ and ‘Ly‑’, in the earlier and contested sign, respectively. They also differ in the figurative element and in the stylisation of the word ‘FIFO’, both in the earlier mark. Although the earlier mark does not have a dominant element, the figurative element is rather large and will not be overlooked.

Taking into account the greater impact of the elements at the beginning of the signs, for the reason explained above, the signs are considered visually similar to a very low degree.

Aurally, as claimed by the opponent, in the present case, ‘Y’ and ‘I’ are pronounced in identical or similar ways in at least part of the relevant territory. Accordingly, the signs coincide aurally in ‘IFO’/‘yfo’ for this part of the public in the relevant territory and in ‘FO’/‘fo’ in the remaining part. The signs are aurally similar to, at least, a low degree.

Conceptually, although the public in the relevant territory will perceive the concepts of the geometric shapes in the figurative element in the earlier mark, the contested 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.

4. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 in question from the perspective of the public referred to above (i.e. consumers perceiving ‘FIFO’ and ‘Lyfo’ as meaningless) in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services compared are similar. They are directed at the public at large and also at professionals, whose degree of attention is likely to vary from average to high.

The signs are visually similar to a very low degree, aurally similar to, at least, a low degree, and not conceptually similar.

The earlier mark is of average distinctive character.

The signs differ in the beginnings of their single verbal elements. They also differ in the figurative element of the earlier mark, and in the stylisation of the word ‘FIFO’. Although the earlier mark does not have a dominant element, the figurative element is clearly bigger than the verbal element.

As mentioned above, the length of the signs may influence the effect of the differences between them. In the present case, given that the signs’ verbal elements are relatively short (only four letters), the Opposition Division finds that the different letters at their beginnings, are sufficiently different visually and aurally to differentiate the marks. This is particularly true given that the marks are conceptually not similar because the earlier mark evokes some concepts in its figurative element, whereas the contested sign is meaningless. These differences will be easily and immediately grasped by the relevant public.

The additional and different elements are clearly perceivable and sufficient to exclude any likelihood of confusion (including a likelihood of association) between the marks, bearing in mind also that the common elements (i.e. two letters) are of reduced impact, due to their position within the signs.

The opponent refers to the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. However, in the present case, an imperfect recollection of the signs can lead only to even less similarity between the signs, mainly because of the different beginnings of the signs’ verbal elements and the dominant figurative element in the earlier mark, which is not present in the contested sign.

Considering all the above, there is no likelihood of confusion on the part of the public perceiving the verbal elements in the signs as meaningless. This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘FIFO’ and/or ‘Lyfo’ has a meaning. This is because, as a result of the resulting conceptual differences, that part of the public will perceive the signs as being even less similar.

. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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

Marta GARCÍA COLLADO

María del Carmen SUCH SANCHEZ

Helen Louise MOSBACK

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.