OPPOSITION No B 3 090 247

Telefónica Germany GmbH & Co. OHG, Georg-Brauchle-Ring 50, 80992 München, Germany (opponent), represented by Müller Fottner Steinecke Rechtsanwälte PartmbB, Elisenstraße 3, 80335 München, Germany (professional representative)

a g a i n s t

Beistegui Hermanos, S.L., Polígono Industrial Jundiz (CTV) Perretagana, 10, 01015 Victoria-Gasteiz, Spain (applicant), represented by María Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative).

On 30/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 247 is upheld for all the contested goods.

2. European Union trade mark application No 18 034 016 is rejected in its entirety.

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 18 034 016 ‘BHLOOP’ (word), namely against all the goods and services in Classes 9, 28, 38 and 41. Due to a subsequent limitation of the application, the opposition is now directed against all of the remaining goods in said application, namely against all the goods in Classes 9 and 28. The opposition is based on European Union trade mark registration No 13 371 463 (figurative) and German trade mark registration No 30 069 384 ‘LOOP’ (word). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the German trade mark on which the opposition is based.

In the present case, the contested trade mark was filed on 06/03/2019.

The decisive date for establishing whether a national trade mark has been registered for not less than 5 years at the relevant date has to be determined according to the national law. Article 16(1) of Directive (EU) 2015/2436 refers, as concerns the use requirement for national marks, to the period of ‘five years following the date of the completion of the registration procedure’. The ‘date of completion of the registration procedure’ that serves for calculating the starting point of the 5-year period for the obligation of use for national registrations (Article 47(2) and (3) EUTMR) is determined by each Member State according to its own procedural rules (14/06/2007, C-246/05, Le Chef de Cuisine, EU:C:2007:340, § 26-28).

In German national proceedings, the opposition period is applied as a post-registration procedure. According to the extract of the earlier German trade mark No 30 069 384, the opposition proceedings were concluded on 17/01/2017. Consequently, at the date of filing of the EUTM application, the earlier mark was not under the use requirement as the five-year grace period commences from the date of the closure of the opposition proceedings.

Therefore, the request for proof of use is inadmissible.

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.

a) The goods

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

European Union trade mark No 13 371 463

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission and/or reproduction of sound and/or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data storage devices; chip cards, encoded electronic chip cards, SIM cards, USB flash drives; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; data processing apparatus; fire-extinguishing apparatus; telecommunications equipment, in particular for the fixed network and mobile radio sectors; computers; computer software; clothing for protection against accidents, irradiation and fire; head protection; spectacles, spectacle lenses, sunglasses, protective goggles and cases therefor; contact lenses; downloadable electronic publications; magnets, magnetic cards; encoded cards; parts and attachments for the aforesaid goods, not included in other classes.

German trade mark No 30 069 384

Class 28: Games and playthings; gymnastic and sporting articles as far as included in class 28; decorations for Christmas trees.

After the applicant’s limitations of the goods and services, the contested goods are the following:

Class 9: Mobile apps; computer software applications, downloadable; downloadable software applications; application software for wireless devices; downloadable mobile applications for the transmission of information; downloadable mobile applications for the management of data; downloadable mobile applications for the management of information; application software for cloud computing services; application software for social networking services via internet; instant messaging software; downloadable instant messaging software; electronic mail and messaging software; workout logging software; virtual classroom software; computer software downloadable from global computer information networks; application server software; multimedia software; media content; interactive multimedia computer programs; interactive multimedia game programs; wireless communication devices for the transmission of multimedia content; monitoring instruments; all of the aforesaid goods in relation to physical exercise and physical exercise apparatus.

Class 28: Gymnastic articles; gymnastic articles; gymnastic articles; exercise benches; exercise bars; dumb-bells; gym balls for yoga; balance beams [for gymnastic]; portable home gymnastic apparatus; gym balls; gymnastic and sporting articles; pommel horses [for gymnastic]; gymnastic training stools; clubs for gymnastics; rings for gymnastics; parallel bars for gymnastics; gymnastic articles; vaulting horses; bar-bells; exercise trampolines; exercise balls; stationary exercise bicycles; fitness exercise machines; stress relief exercise balls; exercise weights; body-building apparatus [exercise]; exercise platforms; fitness exercise machines; body training apparatus [exercise]; manually operated exercise equipment; indoor fitness apparatus; rollers for stationary exercise bicycles; body toner apparatus [exercise]; waist trimmer exercise belts; stress relief balls for hand exercise; exercise treadmills; ankle and wrist weights for exercise; exercise treadmills; ankle and wrist weights for exercise; spring bar tension sets for use in exercising; machines incorporating weights for use in physical exercise; grip balls in the nature of rubber ball for hand exercise; punching bags; blocking dummies; artificial climbing walls; climbers' harness; sparring gloves; boxing gloves; weight lifting gloves; karate gloves; football gloves; webbed swimming gloves; taekwondo mitts; gloves made specifically for use in playing sports; athletic protective wrist pads for cycling; athletic protective knee pads for cycling; athletic protective elbow pads for cycling; protectors for elbows for use when riding bicycles [sports articles]; athletic protective arm pads for cycling; weight lifting belts [sports articles]; swimming belts; weight lifting belts [sports articles]; push-up supports; tee holders; holders for darts; ball holders; kettle bells; lifting grips for weight lifting; barbells for weight lifting; leg weights for exercising; dumbbell shafts for weight lifting; exercise pulleys; sling shots [sports articles]; rowing machines; skateboard paddles; skateboards; skateboard wheels; bags for skateboards; elbow guards for use in skateboarding; athletic protective wrist pads for skateboarding; athletic protective knee pads for skateboarding; elbow guards for use in skateboarding; athletic protective arm pads for skateboarding; exercise bands; body-training apparatus; sports training apparatus; martial arts training equipment; rollers for stationary exercise bicycles; leg weights [sports articles]; spring-supported punch balls; hurdles for use in athletics training; portable gaming devices; hand held units for playing video games; hand-held electronic video games; free-standing video games apparatus; video game apparatus.

Contested goods in Class 9

It is noted that the applicant argues that the marks do not coincide in the market because the applicant is focused on the field of the physical exercise, while the opponent is active in the telecommunication sector. However, the Opposition Division notes that the comparison of the goods must be based on the wording indicated in the list of goods as registered. Any actual or intended use not stipulated in the list of goods is not relevant for this comparison. Therefore, whether the core activities of the opponent belong to the telecommunications sector or not is irrelevant and it is its goods and services, as registered, that should be taken into account. Hence, the applicant’s argument in this regard has to be rejected as unfounded.

The contested mobile apps; computer software applications, downloadable; downloadable software applications; application software for wireless devices; downloadable mobile applications for the transmission of information; downloadable mobile applications for the management of data; downloadable mobile applications for the management of information; application software for cloud computing services; application software for social networking services via internet; instant messaging software; downloadable instant messaging software; electronic mail and messaging software; workout logging software; virtual classroom software; computer software downloadable from global computer information networks; application server software; multimedia software; media content; interactive multimedia computer programs; interactive multimedia game programs; all of the aforesaid goods in relation to physical exercise and physical exercise apparatus are included in the broad category of the opponent’s computer software of the earlier EUTM No 13 371 463. Therefore, they are identical.

The contested wireless communication devices for the transmission of multimedia content; all of the aforesaid goods in relation to physical exercise and physical exercise apparatus are included in the broad category of the opponent’s apparatus for recording, transmission and/or reproduction of sound and/or images of the earlier EUTM No 13 371 463. Therefore, they are identical.

The contested monitoring instruments; all of the aforesaid goods in relation to physical exercise and physical exercise apparatus overlap with the opponent’s measuring apparatus and instruments of the earlier EUTM No 13 371 463. Therefore, they are identical.

Contested goods in Class 28

The contested gymnastic articles; gymnastic articles; gymnastic articles; exercise benches; exercise bars; dumb-bells; gym balls for yoga; balance beams [for gymnastic]; portable home gymnastic apparatus; gym balls; gymnastic and sporting articles; pommel horses [for gymnastic]; gymnastic training stools; clubs for gymnastics; rings for gymnastics; parallel bars for gymnastics; gymnastic articles; vaulting horses; bar-bells; exercise trampolines; exercise balls; stationary exercise bicycles; fitness exercise machines; stress relief exercise balls; exercise weights; body-building apparatus [exercise]; exercise platforms; fitness exercise machines; body training apparatus [exercise]; manually operated exercise equipment; indoor fitness apparatus; rollers for stationary exercise bicycles; body toner apparatus [exercise]; waist trimmer exercise belts; stress relief balls for hand exercise; exercise treadmills; ankle and wrist weights for exercise; exercise treadmills; ankle and wrist weights for exercise; spring bar tension sets for use in exercising; machines incorporating weights for use in physical exercise; grip balls in the nature of rubber ball for hand exercise; punching bags; blocking dummies; artificial climbing walls; climbers' harness; sparring gloves; boxing gloves; weight lifting gloves; karate gloves; football gloves; webbed swimming gloves; taekwondo mitts; gloves made specifically for use in playing sports; athletic protective wrist pads for cycling; athletic protective knee pads for cycling; athletic protective elbow pads for cycling; protectors for elbows for use when riding bicycles [sports articles]; athletic protective arm pads for cycling; weight lifting belts [sports articles]; swimming belts; weight lifting belts [sports articles]; push-up supports; tee holders; holders for darts; ball holders; kettle bells; lifting grips for weight lifting; barbells for weight lifting; leg weights for exercising; dumbbell shafts for weight lifting; exercise pulleys; sling shots [sports articles]; rowing machines; skateboard paddles; skateboards; skateboard wheels; bags for skateboards; elbow guards for use in skateboarding; athletic protective wrist pads for skateboarding; athletic protective knee pads for skateboarding; elbow guards for use in skateboarding; athletic protective arm pads for skateboarding; exercise bands; body-training apparatus; sports training apparatus; martial arts training equipment; rollers for stationary exercise bicycles; leg weights [sports articles]; spring-supported punch balls; hurdles for use in athletics training are included in the broad category of, or overlap with, the opponent’s gymnastic and sporting articles as far as included in class 28 of the earlier German trade mark No 30 069 384. Therefore, they are identical.

The contested portable gaming devices; hand held units for playing video games; hand-held electronic video games; free-standing video games apparatus; video game apparatus are included in the broad category of, or overlap with, the opponent’s games and playthings of the earlier German trade mark No 30 069 384. 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 found to be identical are directed at the public at large with some more specialised goods directed at business customers with specific professional knowledge or expertise, for example, in the IT field.

The degree of attention may vary from average to above average, depending on the price, frequency of purchase, (specialised) nature and conditions of the goods provided.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

EUTM No 13 371 463 (1) LOOP DE No 30 069 384 (2)	BHLOOP
Earlier trade marks	Contested sign

The relevant territory is the European Union, as regards the earlier mark (1), and Germany, as regards the earlier mark (2).

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.

In relation to the EU earlier mark, considering that the other earlier mark on which the opposition is based is a German trade mark registration, the Opposition Division considers it appropriate to focus the comparison as far as this earlier right is concerned, on the general German-speaking public.

The element ‘LOOP’ exists as such in the German language with the following meanings, (1) a closed pipe circuit in which material tests are carried out under various conditions (used in nuclear technology); 2) a sequence of program parts that can be run through several times (used in IT); or, 3) a short sound sequence repeated several times by technical means in electronically generated or supported music (information extracted from Duden on 27/10/2020 at https://www.duden.de/rechtschreibung/Loop). These specific meanings, however, would be known only by the professional public. It is considered that the majority of the general public would not be familiar with them. However, since English is understood by a significant part of the German public, it is reasonable to assume that the element ‘LOOP’ will be associated with the general English-language meaning, as ‘the round or oval shape formed by a line, string, etc., that curves around to cross itself’ (information extracted from Collins Dictionary on 27/10/2020 at https://www.collinsdictionary.com/dictionary/english/loop). This element is distinctive to a normal degree, since its meaning is not directly related to the relevant goods in a clear way that could impair its distinctiveness.

The rectangular background of the earlier mark (1) is commonplace and merely serves to highlight the information contained therein. Also, the typeface used is fairly standard. Since these figurative features are likely to be perceived by consumers as merely of decorative nature, and not as indicating the commercial origin of the goods, their distinctiveness is considered to be at most limited.

As regards the contested sign, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which suggest a specific meaning or resemble words known to them (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51; 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Since the relevant public is familiar with the English-language, it will dissect the word ‘LOOP’ within the contested sign. The above findings regarding the meaning and distinctiveness of the element ‘LOOP’ of the earlier marks, apply according to the contested sign. The remaining component, ‘BH’, is not likely to be associated with any meaning in the context of the goods at issue. Therefore, it is distinctive.

Visually and aurally, the signs coincide in the letter sequence ‘LOOP’ and its pronunciation. It constitutes the sole verbal element of the earlier marks and four out of six letters in the contested sign. The signs differ in two letters, ‘BH’, placed at the beginning of the contested sign. From the aural point of view, since the component ‘BH’ constitutes a combination of mere consonants, it will be pronounced by mentioning each letter separately. The pronunciation of ‘BH’ at the beginning would facilitate the recognition of the element ‘LOOP’.

As regards the earlier mark 1, the signs differ also in the figurative features of this earlier mark, which have little impact on the comparison, as explained above.

The Opposition Division considers that even if the differing letters are placed at the beginning of the contested sign, which is the part to which consumers usually pay more attention, two differentiating letters, being two consonants, do not create sufficient differences to offset the similarity resulting in the remaining four identical letters.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be perceived by the significant part of the public as referring to the same concept of ‘LOOP’, the signs are conceptually similar to at least an average degree.

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.

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

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 in question from the perspective of the relevant public under analysis. Therefore, the distinctiveness of the earlier marks 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/or 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 contested goods are identical to the opponent’s goods, and they target the public at large and professionals. The degree of attention of the relevant public may vary from average to above average. The distinctiveness of the earlier marks is normal.

The signs are visually and aurally similar to an average degree, whereas conceptually similar to at least an average degree. The contested sign incorporates the verbal element of the earlier marks in its entirety and only differs in two additional letters ‘BH’ at its beginning. Although the public will not overlook certain differences between the signs, the likelihood of confusion includes the likelihood of association with the earlier trade marks. It covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Therefore, in the present case, even though the signs may not be directly confused, there is a likelihood of confusion when the relevant public, although aware of the differences between the signs, nevertheless will assume, owing to the use of the common component ‘LOOP’ for identical goods, that they are derived from the same undertaking or economically linked undertakings.

It is likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier marks, 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). In particular, consumers could be led to believe that the owner of the earlier trade marks has launched a new line of identical products.

The applicant argues that the family of trade marks ‘BH’ has a reputation and filed various items of evidence to substantiate this claim.

In this respect it is noted that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Further, in its observations, the applicant argues that there are numerous trade marks on the register including the element ‘LOOP’, which have pacifically coexisting in the European Union with the opponent’s trade marks. In support of its argument the applicant refers to the ‘TMView’ extract showing marks consisting of or containing the element ‘LOOP’ in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘LOOP’. Under these circumstances, the applicant’s claims must be set aside.

Bearing in mind the above, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance their similarities with regard to the identical goods.

Consequently, the Opposition Division concludes that there is a likelihood of confusion on the part of the general German-speaking part of the public. As mentioned above in section c) of this decision, the 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 EUTM and German trade mark registrations. It follows that the contested trade mark must be rejected for all the contested goods.

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

Teodora TSENOVA-PETROVA

Marzena MACIAK

Marta GARCÍA COLLADO

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.