OPPOSITION Nо B 3 102 548

 

O2 Worldwide Limited, 20 Air Street, W1B 5AN London, United Kingdom (opponent), represented by Stobbs, Widenmayerstr. 34, 80538 München, Germany (professional representative) 

 

a g a i n s t

 

Manly SARL, 33 Place Louise De Bettignies, 59000 Lille, France (applicant), represented by Earvin & Lew, 34, Rue du Général Delestraint, 75016 Paris, France (professional representative).

On 30/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 102 548 is upheld for all the contested goods and services.

 

2.	European Union trade mark application No 18 098 116 is rejected in its entirety.

 

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

 

REASONS

 

On 07/11/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 098 116 (figurative mark). The opposition is based on, inter alia,  European Union trade mark registrations No 9 279 456 and No 15 301 005, both for the word mark ‘O2’. The opponent invoked  Article 8(1)(b) EUTMR and Article 8(5) 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.

In its observations filed on 10/08/2020, the applicant requested that the opponent provides proof of use of some of the earlier marks on which the opposition was based.

However, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR. Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 registrations No 9 279 456 and No 15 301 005.

a) The goods and services

 

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

 

Earlier mark 1: EUTM registration No 9 279 456 ‘O2’ (word)

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers); alcoholic essences; alcoholic extracts; fruit extracts [alcoholic].

Class 35: Business management; business administration.

Class 43: Services for providing food and drink.

Earlier mark 2: EUTM application No 15 301 005 ‘O2’ (word)

Class 41: Entertainment; sporting and cultural activities; arranging of beauty contests; information services relating to education, training, entertainment, sporting and cultural activities provided by means of telecommunication networks; provision of musical events; arranging, organising and conducting of competitions, games and quizzes; information and advisory services relating to the aforesaid services provided over a telecommunications network.

The contested goods and services are the following:

Class 32: Beer and brewery products; soft drinks; fruit drinks; juices; cordials; soda water; mineral and aerated waters; cocktails, non-alcoholic; aperitifs, non-alcoholic; non-alcoholic beer; alcohol free wine.

Class 33: Alcoholic beverages (except beer); cocktails; aperitifs; wine; digesters [liqueurs and spirits]; spirits [beverages]; brandy; liqueurs.

Class 35: Management administration of commercial undertakings; management assistance in business affairs; assistance in franchised commercial business management; franchising services providing business assistance.

Class 41: Entertainment services; administration [organisation] of contests; organising of exhibitions for entertainment purposes; arranging of games; organising events for cultural purposes; information relating to cultural activities.

Class 43: Bar services; pubs; providing drink services; provision of food and drink; food and drink catering.

 

Contested goods in Class 32

The contested beer is identical with the opponent’s beers.

The contested brewery products comprise inter alia various extracts used for making beer, such as extracts of hops which may also be referred to as preparation for making beer. Therefore, the broad category of the contested brewery products at the very least overlaps with the opponent’s syrups and other preparations for making beverages. These goods are considered identical.

The contested soft drinks; fruit drinks; juices; cordials (sweet non-alcoholic drinks made from fruit juice); soda water; mineral and aerated waters; cocktails, non-alcoholic; aperitifs, non-alcoholic; non-alcoholic beer; alcohol free wine are either contained in the list of goods of the earlier mark 1, or they are included in the broad categories of the opponent’s mineral and aerated waters and other non-alcoholic drinks. They are, therefore, identical.

Contested goods in Class 33

The contested alcoholic beverages (except beer) are identical with the opponent’s alcoholic beverages (except beers).

The contested cocktails; aperitifs; wine; digesters [liqueurs and spirits]; spirits [beverages]; brandy; liqueurs are included in the broad category of the opponent’s alcoholic beverages (except beers). Therefore, they are identical.

Contested services in Class 35

All the contested services in this class are specific business management and/or assistance services. These services are included in, or at least overlap with, the opponent’s business management. They are, therefore, identical.

Contested services in Class 41

The contested entertainment services are identical with the opponent’s entertainment.

The contested administration [organisation] of contests includes, as a broader category, or at least overlaps with, the opponent’s arranging of beauty contests. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested organising of exhibitions for entertainment purposes cannot be clearly separated from the opponent’s entertainment. As these categories of services overlap substantially, they are considered identical.

The contested arranging of games are included in the opponent’s arranging, organising and conducting of games. Therefore, they are identical.

The contested organising events for cultural purposes is included in the broad category of the opponent’s sporting and cultural activities. Moreover, it cannot be clearly separated from the opponent’s provision of musical events which are, essentially, cultural events. Therefore, the contested services are identical to the aforementioned services of the opponent.

The contested information relating to cultural activities includes, as a broader category, the opponent’s information services relating to cultural activities provided by means of telecommunication networks. 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 43

The contested bar services; pubs; providing drink services; provision of food and drink; food and drink catering are identical to the opponent’s services in the same class, either because they are identically included in both lists (including synonyms) or because they are included in the broad category of the opponent’s services for providing food and drink.

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 both the public at large and a professional public.

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

c) The signs

O2
Earlier trade marks 1 and 2	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 earlier marks are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant, in principle, whether word marks are depicted in upper- or lower-case characters, or in a combination thereof.

The contested sign is a figurative mark that may be interpreted in various ways. In the Opposition Division’s view, the majority of the relevant public will perceive the verbal elements of the contested sign as the stylised letters ‘OZ’. This is particularly true for the English-speaking part of the public which may perceive it as an informal reference to a noun ‘Australia’ or an adjective ‘Australian’ (A person from Australia) (information extracted from Lexico Dictionary on 24/03/2021 at www.lexico.com/en/definition/oz), This perception is further reinforced by the depiction of the Australian continent in the background (17/04/2008, T‑389/03, Pelikan (Representation of a pelican), EU:T:2008:114, § 91).

However, this does not apply to the whole relevant public. Another part of the public, in particular the non-English-speaking part and/or the public without any special interest in Australia and its history/cultural heritage, may not be aware of the above-mentioned meaning of the word ‘OZ’ and, consequently, may not make any mental associations with this verbal element and the figurative depiction in the background. The Opposition Division agrees with the opponent that a part of the public, which is not negligible, will perceive the verbal elements of the contested sign as the letter ‘O’ followed by the number ‘2’. Indeed, such a perception cannot be excluded in view of the specific stylisation of these verbal elements in the contested sign, resembling a careless handwritten style with the second element slightly elongated and with rounder edges, which altogether makes it similar to ‘O2’.

The fact that the contested sign was described by the applicant in the trade mark applications as ‘OZ’ is not conclusive. Classifications or descriptions in trade mark registers are for administrative purposes (14/04/2020, R 1033/2019-2, O1 (fig) / O2 (fig.) et al., § 41). What is pertinent is the signs’ overall impression conveyed to the relevant public and, accordingly, whether they are similar from the point of view of the relevant public. According to established case-law, the perception of the signs by the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (10/03/2016, T-53/15, Curodont, EU:T:2016:136, § 32).

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. The Court has already held that even if a likelihood of confusion only exists for part of the relevant public, namely a non-negligible part of relevant consumers, such a finding is sufficient to establish a likelihood of confusion (04/07/2014, T-1/13, GLAMOUR, EU:T:2014:615 § 36).

Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-negligible part of the public will perceive the verbal elements of the contested sign as ‘O2’, as this perception will result in a degree of conceptual similarity between the signs and may increase the likelihood of confusion for this part of the public.

It is plausible that the coinciding verbal element ‘O2’ will be understood or associated by the public to which this examination is limited with the chemical symbol for oxygen in its molecular form, given that the ‘O2’ formula is well known (02/02/2016, R 625/2015‑2, EO2 / O2 et al., § 27; 20/08/2018, R 2083/2017‑2, 3b (fig.) / O2 et al., § 69; 06/06/2018, R 1784/2017‑2, O2CHAIR MORE AIR, LESS STRESS (fig.) / O2 (et al.), § 22). The fact that ‘2’ is not depicted in subscript (‘O₂’) is not relevant, as this formula is frequently referred to in both ways and its pronunciation is the same. Given that ‘O2’ has no obvious relationship with the relevant goods and services, its inherent distinctive character is average.

A part of the public will perceive the figurative element of the contested sign as a stylised depiction of the Australian continent against a circular background resembling contours of the globe. However, it is likewise plausible that another part of the public will not associate it with any specific country/continent or, indeed, any concept(s) at all – the current examination is limited to this part of the public only. The figurative element is distinctive due to its peculiar depiction. The stylisation of the verbal elements of the contested sign is not particularly elaborative and, in any event, less distinctive than the verbal elements it embellish.

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

Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30). At the same time, the earlier marks are very short and, according to case-law, the shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, small differences in short words may frequently lead to a different overall impression (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39).

Visually, the signs have the same structure, as they are both composed of two characters: a letter followed by a number. Moreover, from the perception of the public to which this examination is limited, the signs coincide in both of these characters. The contested sign differs from the earlier marks in its stylisation and its figurative aspects, described above.

The fact that one mark is entirely incorporated in the other mark establishes a certain degree of similarity between them (08/09/2010, T‑152/08, Scorpionexo, EU:T:2010:357, § 66; 08/09/2010, T‑369/09, Porto Alegre, EU:T:2010:362, § 26; 20/09/2011, T‑1/09, Meta, EU:T:2011:495; 28/09/2011, T‑356/10, Victory Red, EU:T:2011:543, § 26; 23/05/2007, T‑342/05, Cor, EU:T:2007:152; 10/11/2011, T‑313/10, Ayuuri Natural, EU:T:2011:653; 15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 55). The key point is how the signs at issue are normally perceived overall and not how the stylistic differences between the signs may be perceived in the event that a particularly meticulous consumer is in a position to examine the graphic stylisation and draw comparisons between them (20/07/2017, T-521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 49).

Given that the signs are very short and that degree of attention of the relevant public for some of the goods/services at issue is high, they are visually similar to at least a low degree.

Aurally, irrespective of different pronunciation rules in different parts of the relevant territory, the signs will be pronounced in the same way, in two syllables with both characters ‘O’ and ‘2’ spoken separately, for example: ‘o-two’ in English, ‘o-zwei’ in German, ‘o-dwa’ in Polish or ‘o-dos’ in Spanish. The purely figurative elements of the contested sign, including its stylisation, are not subject to a phonetic assessment. Therefore, the signs are aurally identical.

Conceptually, both signs will evoke, or will be associated with, the same distinctive concept, namely that of oxygen. Therefore, and irrespective of whether or not the contested sign’s figurative elements will be associated with any concept(s), 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 marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent argued that its earlier marks are highly distinctive per se (at least for some of its goods and services), because they have no relation to the goods and services at issue. However, a 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). It is Office practice, when the earlier marks are not descriptive (or are not otherwise non-distinctive), to consider them as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier marks has been acquired through use.

According to the opponent, its earlier marks have been extensively used and enjoy an enhanced scope of protection for goods and some of the services at issue. 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 marks will rest on their distinctiveness per se. In the present case, the earlier marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

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 (recital 11 of the EUTMR). 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. Moreover, they are aurally identical and conceptually similar to at least an average degree. The degree of attention of the relevant public, as defined above, varies between average and high.

In cases where the goods and services are identical, such as this one, the conflicting signs must maintain a sufficient distance from each other (29/01/2013, T‑283/11, Nfon, EU:T:2013:41, § 69; 28/04/2014, T‑473/11, Menochron, EU:T:2014:229, § 46). The differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them.

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 fact that the relevant public will be more attentive does not mean that they will examine the mark before it in the slightest detail. 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).

A global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As explained in the section c) above, it cannot be excluded that a part of the public (to which this examination is limited) will perceive the verbal elements of both marks as the letter ‘O’ followed by the number ‘2’. For this part of the public, the only element of the earlier marks, ‘O2’, is entirely incorporated as the only verbal element of the contested sign, where it will be identified and understood as referring to the same concept. The contested sign differs in the stylisation of its verbal elements and in its figurative aspects which introduce certain differences between the signs. However, in the Opposition Division’s view, they are not sufficient to counterbalance the overall impression that the signs are similar to each other.

Although the public may notice certain differences between the signs, likelihood of confusion also includes a likelihood of association with the earlier trade mark. 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, even if the marks were not directly confused with one another, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, owing to the use of the identical and distinctive element ‘O2’ for identical goods and services, that they are derived from the same undertaking or economically linked undertakings, as the case may be.

The applicant refers to several previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. The applicant mentioned the following decision of the Opposition Division: B 2 969 338 ( v TS), B 2 655 192 ( v GT), B 2 942 350 ( vs CF), B 2 892 555 ( v AT), B 2 975 178 (WT v ), B 2 924 226 ( v KI) and B 2 528 092 (LM and v ).

As can be seen already from representations of the marks, the degree of transformation of the verbal elements in figurative marks was very high or even one of the letters was clearly different (e.g. case B 2 975 178) or not recognisable (e.g. case B 2 892 555). This is not the case here, as the stylisation of the verbal elements in the contested sign is fairly simple and the element ‘O2’ will still be perceived by the non-negligible part of the public.

Considering all the above, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities between them for identical goods and services. The relevant public may believe that these goods and services come from the same undertaking or, at least, economically linked undertakings.

Consequently, the Opposition Division concludes that there is a likelihood of confusion on the part of the public to which this examination is limited (as explained above). 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 registrations No 9 279 456 and No 15 301 005. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the abovementioned earlier rights lead 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(5) 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, 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

Lars HELBERT

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.