OPPOSITION No B 3 080 468

i.safe MOBILE GmbH, i_Park Tauberfranken 10, 97922 Lauda-Königshofen, Germany (opponent), represented by Gleim Petri Patent- und Rechtsanwaltspartnerschaft mbB, Ludwigstrasse 22, 97070 Würzburg, Germany (professional representative)

a g a i n s t

Think Future, Centro de Empresas inovadoras Nº1, 6000-767 Castelo Branco, Portugal (applicant).

On 26/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 468 is partially upheld, namely for the following contested goods:

Class 9: Downloadable software applications; downloadable computer utility software; computer software platforms, recorded or downloadable; downloadable computer software for the transmission of information; downloadable computer software for the management of data; downloadable computer software for the transmission of data; map software; computer digital maps.

2. European Union trade mark application No 18 026 407 is rejected for all the above goods. It may proceed for the non-contested services in Class 36 and the remaining contested goods in Class 9, namely:

Class 9: Databases; data recorded electronically; data recorded electronically from the internet.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 026 407 for the figurative mark , namely against all the goods in Class 9. The opposition is based on, inter alia, German trade mark registration No 302 011 048 240 for the figurative mark . 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 German trade mark registration No 302 011 048 240.

1. The goods

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

Class 9: Mobile phone, wireless equipment.

The contested goods are the following:

Class 9: Databases; data recorded electronically; data recorded electronically from the internet; downloadable software applications; downloadable computer utility software; computer software platforms, recorded or downloadable; downloadable computer software for the transmission of information; downloadable computer software for the management of data; downloadable computer software for the transmission of data; map software; computer digital maps.

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.

Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. The contested downloadable software applications; downloadable computer utility software; computer software platforms, recorded or downloadable; downloadable computer software for the transmission of information; downloadable computer software for the management of data; downloadable computer software for the transmission of data; map software; computer digital maps are various types of software or software platforms.

The opponent’s mobile phone is a telephone with access to a cellular radio system. It can be used over a wide area, without a physical connection to a network. Modern mobile phones use software in order to operate, but also to download, install and utilise other software (application software also known as ‘an app’), for example the contested map software may be used to add a navigation function to a mobile phone. In addition, producers of mobile phones often develop and market computer software that may be used together with mobile phones, such as the contested downloadable computer software for the transmission of data that, inter alia, allows consumers to transfer data between mobile phone and computer. Therefore, the contested software is similar to the opponent’s mobile phone as they often coincide in their producer, relevant public and distribution channels.

On the contrary, the contested databases; data recorded electronically; data recorded electronically from the internet have nothing or only have very little in common with the opponent’s mobile phone, wireless equipment. These goods differ in their nature, purposes and methods of use. They are normally provided by different manufacturers and are distributed through different channels. They are neither complementary nor in competition. Therefore, they are dissimilar. The opponent did not put forward any arguments explaining why it considers these goods to be similar.

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 found to be similar are directed at the public at large, whose degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 marks are figurative marks. The earlier mark is composed of the verbal elements ‘i.safe mobile’ in a non-distinctive standard, black typeface. The contested sign is composed of the letter ‘i’ in white and the verbal elements ‘SAFE GO’ below it in blue typeface, which is also fairly simple and distinctive to no more than a low degree.

On the earlier mark’s left-hand side there is a red hexagonal frame, open on the right side, around the letter ‘i’ and the dot. As regards the contested sign, there is the letter ‘i’ in a blue rotated square, placed above the verbal elements ‘SAFE GO’. Both of these figurative elements are basic geometric shapes that are commonly used in trade to highlight the information contained within (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27). Therefore, their inherent distinctive character is low, at best.

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). In the present case, the figurative elements of the signs are clearly less relevant than the verbal elements, and the fairly standard typeface in which the signs are depicted must be considered not elaborate or sophisticated enough to lead consumers’ attention away from the verbal elements they embellish.

A considerable part of the relevant public will perceive the coinciding letter ‘i’ as a reference to ‘internet’. It is commonly used in that sense on the market in relation to software and various electronic devices (e.g. mobile phones) and, therefore, its inherent distinctiveness for these goods is low. However, another part of the public will perceive the letter ‘i’ as such, namely as the ninth letter of the basic Latin alphabet. As this meaning is not descriptive, allusive or otherwise weak in relation to the relevant goods, its inherent distinctive character is average for this part of the public.

The coinciding element ‘safe’ will be associated by the public with its English meaning, namely ‘[a] strong fireproof cabinet with a complex lock, used for the storage of valuables’ or a ‘[l]ocker in the safe [of a financial institution] for the safe storage of money, precious jewelry, securities or similar’ (information extracted from Lexico Dictionary and Duden Dictionary on 16/03/2020 at www.lexico.com/definition/safe and www.duden.de/
rechtschreibung/Safe). As such, it will be seen by the relevant public as an allusive suggestion that the goods are characterised by an enhanced degree of safety or security. This is also confirmed by the opponent’s evidence according to which its mobile phone provides safety in explosively hazardous areas (Enclosure 4ip.1). Therefore, its inherent distinctiveness is low for the relevant goods.

The earlier mark’s dot (‘.’), between the letter ‘i’ and the verbal element ‘safe’, is a basic punctuation mark to which the relevant public will not attach much trade mark significance, if any.

The earlier mark’s verbal element ‘mobile’ is directly descriptive of the opponent’s mobile phone. Therefore, it is non-distinctive. This meaning will be understood either because it is a basic English word or through an association with a German word ‘Mobiltelefon’ (information extracted from Duden Dictionary on 16/03/2020 at www.duden.de/
rechtschreibung/Mobiltelefon).

It is likely that the contested sign’s verbal element ‘GO’ will be understood in one of its basic English meanings, such as ‘[m]ove from one place to another; travel’ or ‘[l]eave; depart’ (information extracted from Lexico Dictionary on 16/03/2020 at www.lexico.com/
en/definition/go), by an important part of the public, while the remaining part will consider it meaningless. Whether understood or not, it is not descriptive, allusive or otherwise weak in relation to the goods and, therefore, its inherent distinctive character is average.

The signs have no elements that could be considered as more dominant (eye-catching) than the other elements.

Visually, the signs coincide in the letter ‘i’ and the verbal element ‘safe’, although depicted and structured in a different manner in the signs. There is a certain degree of similarity, although only slight, on account of the fact that the letter ‘i’ is depicted in some geometric shapes. The signs differ in their remaining verbal elements, the dot and the verbal element ‘mobile’ of the earlier mark and the verbal element ‘GO’ of the contested sign. Furthermore, the signs differ in their figurative elements, their stylisations and arrangements which, however, are not particularly distinctive, as explained above.

Overall, the signs are visually similar to at least a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘i’ and the verbal element ‘safe’. The pronunciation of the signs differs in the sound of the verbal element ‘mobile’ of the earlier mark, which, however, is non-distinctive and has very limited impact, if any. Moreover, the pronunciation of the signs differs in the sound of the verbal element ‘GO’ of the contested sign. Purely figurative elements of the signs, including their stylisation, are not subject to a phonetic assessment.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with identical meanings evoked by the letter ‘i’ and the verbal element ‘safe’, they are conceptually similar to at least an average degree, despite different concepts that may be evoked by (some) other elements, for at least a part of the relevant public.

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 argued that the earlier mark has a high degree of distinctiveness because it has no connection with the opponent’s goods. However, it should be recalled that a trade mark will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). Enhanced distinctiveness can only be attributed to a mark based on intensive use and recognition on the market.

The opponent also claimed that the earlier trade mark enjoys enhanced distinctiveness due to an intensive use of that mark on the market.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Enclosure 4ip.1 — three screenshots taken on 22/10/2019 from the main section of the website www.isafe-mobile.com, in English, German and French.

• Enclosure 4ip.2 — three screenshots taken on 22/10/2019 from the news section of the website www.isafe-mobile.com, in English:

• dated 02/08/2019, concerning the ‘Maintenance Antwerp’ trade show to be held on 27-28 March;

• dated 01/09/2019, concerning the ‘Maintenance Dortmund’ trade fair to be held on 20-21 February;

• dated 30/10/2018, concerning the ‘Expoprotection’ trade fair to be held on 6-8 November in Paris.

The opponent should prove an enhanced distinctiveness of its earlier trade mark at the date of application of the contested sign, namely 24/02/2019. The evidence should refer to the goods for which an enhanced distinctiveness was claimed.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to demonstrate that the earlier trade mark on which the opposition is based acquired a high degree of distinctiveness through its use.

Most of the documents submitted postdate the date of the contested application. Only the entry dated 30/10/2018, regarding the ‘Expoprotection’ trade fair (Enclosure 4ip.2), concerns the relevant period, however, it is clear from its content that the trade fair mentioned therein was about to be held in the future (on 6-8 November in Paris). Therefore, this evidence does not prove that the fair in question actually took place.

In any event, evidence submitted gives only a very general outline of some use of the earlier mark in connection with mobile phone, but it does not enable any conclusions to be drawn in relation to the earlier mark’s recognition by consumers. Furthermore, the evidence does not indicate the sales volumes, the market share of the earlier mark or the extent to which this mark has been promoted in the relevant territory. As a result, the evidence does not demonstrate that the earlier mark is known by a significant part of the relevant public.

The evidence submitted does not demonstrate that the earlier trade mark has acquired an enhanced degree of distinctiveness in the relevant territory.

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 clear univocal meaning in relation to the opponent’s mobile phone in Class 9 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak or non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are partly similar and partly dissimilar to the opponent’s goods. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at dissimilar goods and services cannot be successful. The examination will therefore proceed only for the goods that are similar.

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 that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. 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).

The signs are visually similar to at least a low degree, aurally similar to at least an average degree and conceptually similar to at least an average degree. The earlier mark has a normal degree of distinctiveness for the relevant public, which is composed of the public at large who have an average degree of attention.

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).

The Opposition Division is of the opinion that the differences between the signs are not sufficient to counteract their similarities. The first elements of the earlier mark, namely the letter ‘i’ and the verbal element ‘safe’, are entirely incorporated at the beginning of the contested sign. It is settled case-law that 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. Therefore, the similarity at the beginning of the signs is of particular importance.

Although the earlier mark contains the additional verbal element ‘mobile’, it is non-distinctive for the relevant goods and, therefore, its impact on consumers’ perception is very limited, if any. Likewise, while the contested sign differs in the verbal element ‘GO’, it is relatively short and located in a less prominent position and, therefore, it is not sufficient to distract the attention of the public from the coinciding elements. The remaining differences between the signs, namely their figurative elements, stylisations and arrangement as well as the earlier mark’s dot, are either non-distinctive, distinctive to at most a low degree or less relevant, as explained above. Therefore, the public will not attach much trade mark significance (if any) to these elements.

Although the public will not overlook certain differences between the signs, a likelihood of confusion covers situations where consumers directly confuse the trade marks themselves, or where consumers make a connection between the conflicting signs and assume that the services covered are from the same or economically linked undertakings. Even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when average consumers, although aware of the differences between the signs, nevertheless assume owing to the use of the identical elements, the letter ‘i’ and the verbal element safe’ on similar goods, that they are derived from the same undertaking or, at the very least, an economically linked undertaking.

Indeed, it is conceivable that relevant consumers will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of goods which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the Opposition Division concludes that there is a likelihood of confusion, in the form of a likelihood of association, on the part of the relevant public and, therefore, the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 302 011 048 240.

The opponent also based the opposition on international trade mark registration No 1 232 349 designating the European Union for the figurative mark . This trade mark covers identical goods to those of German trade mark registration No 302 011 048 240, as analysed above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier mark. It may proceed for the remaining contested goods in Class 9 which were found dissimilar, as well as for the non-contested services in Class 36.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

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.