OPPOSITION Nо B 3 105 288

 

Blackberry Limited, 2200 University Avenue East, N2K 0A7 Waterloo, Canada (opponent), represented by D Young & Co LLP, Rosental 4, 80331 Munich, Germany (professional representative)

 

a g a i n s t

 

Shenzhen Zhuoyuetai Technology Co., Ltd., Room 02-A222, Shanling Digital Building A, No. 10 Chiwan Road, Chiwan Community, Zhaoshang Street, Nanshan District, Shenzhen, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo Ang. Via Appiani (Corte Del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 18/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 105 288 is partially upheld, namely for the following contested goods: Class 9: Infrared detectors; Radar detectors; Earphones; Smartwatches; GPS navigation devices; Personal security alarms; Electronic anti-theft alarms; Headphones; Video cameras; Cameras; Software for mobile phones; Photographic equipment.
2.	European Union trade mark application No 18 115 407 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 115 407 (figurative mark), in Classes 9 and 11. The opposition is based on EUTM registration No 17 984 596 for the mark 'BB' (word mark). The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

 

 

REPUTATION — ARTICLE 8(5) EUTMR

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 

• The signs must be either identical or similar.

 

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

a) Reputation of the earlier trade mark

  

According to the opponent, the earlier trade mark has a reputation in the European Union for all the goods and services on which the opposition is based.

 

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In the present case, the contested trade mark was filed on 26/08/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation.

The list of these goods and services, in Classes 9, 38 and 42, as well as the list of the contested goods, in Classes 9 and 11, can be found below in the section of this decision which addresses the opponent’s claims as based on Article 8(1)(b) EUTMR.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

 

On 13/05/2020 the opponent submitted evidence to support this claim. As the opponent requested that the sensitive commercial data contained in Annexes 54 and 55 be kept confidential vis-à-vis third parties, the Opposition Division will describe this part of the evidence only in the most general terms without divulging any such data.

In its submissions sent along with the evidence the opponent argues that it has been using the ‘BLACKBERRY’ house mark and other related trade marks (‘BBM’ and (to which it refers as ‘the emblem’ and which it describes as a representation of two stylised, staggered overlapping letters ‘B’)) since at least 1999 when it revolutionised the communications industry by introducing to the world the first mobile handheld communication device. It adds that by 2005, the ‘BLACKBERRY’ branded mobile devices had been used throughout the world and had become an important tool for business executives, government officials and many other professionals, profoundly changing the way people conducted business, communicated and socialised. It also claims that for almost 20 years, Blackberry’s reputation has been developed across an expanding number of innovative technology solutions including mobile devices, telecommunication services, computer device/internet security and connectivity solutions, embedded software, device to cloud and cloud to device communication, computer software for machine to machine, internet of things communication integration, software development platforms, enterprise mobility management, mobile device management, mobile applications management, automation and process control solutions. It adds that its products have earned numerous awards and are used by thousands of organizations worldwide. It refers to sales and marketing efforts including collaboration with strategic partners. It claims that the ‘BB’ mark is a well-known acronym which refers uniquely to the ‘BLACKBERRY’ trade name and house mark and explains that ‘BBM’ is the well-known acronym for the software ‘BLACKBERRY MESSENGER’. It clarifies that the ‘BB’ mark was adopted on the international market as early as the year 2009. On the one hand, the high quality of the products and services and their tremendous popularity has led to the public shortening the mark under the nickname ‘BB’; on the other hand, the ‘emblem’ has been used since 1999. Additionally, the opponent mentions that the letters ‘BB’ are used as the ticker symbol of the opponent on the Toronto Stock Exchange, the New York Stock Exchange and the Nasdaq Stock Exchange.

Preliminary remark: the evidence submitted is particularly voluminous as it consists of 60 annexes and more than 2200 pages. In the vast majority of these annexes, the Opposition Division has not identified any reference to a sign ‘BB’ let alone a trade mark ‘BB’. Therefore, the documents in question are described in general, succinct terms even where they include hundreds of pages. All references to the expression ‘BB’ identified by the Opposition Division are expressly mentioned in the list below, which means that unless otherwise specified, the expression is not mentioned in the document in question (or was not spotted despite a thorough examination nor specifically mentioned by the opponent itself).

Annex 1: general presentation of the opponent and of its offer of products and services consisting of printouts from the opponent’s website http://global.blackberry.com. The company is described as a ‘global leader in mobile communications which revolutionised the mobile industry when it was introduced in 1999, and which now aims to inspire the success of its millions of customers around the world by continuously pushing the boundaries of mobile experiences’. The products presented are BlackBerry-branded smartphones, BlackBerry Enterprise Software (BES), BBM Enterprise (encrypted voice and messaging software), AtHoc by BlackBerry for crisis/emergency communications, BlackBerry QNX & Radar for embedded, automotive and connected transportation systems, the Core BlackBerry IoT (internet of things) platform. The symbol is displayed on some printouts either before the word ‘BLACKBERRY’ or on its own.

Annex 2: list of the trade marks registered by the opponent worldwide, inter alia the trade marks ‘BB’.

Annex 3: evidence showing that the abbreviation ‘BB’ is used as the ticker symbol or stock symbol for the shares of the opponent on the New York and Toronto stock exchanges, such as:

Annex 4: two decisions of WIPO’s Arbitration and Mediation Centre concerning disputes in the field of domain names including the letters ‘BB’. The section ‘Factual Background’ of the decisions states: ‘the name BlackBerry is often abbreviated by users and commentators to “BB” and this is one of the Complainant’s trademarks’. It is also mentioned in the Parties’ Contentions section that the complainant ‘says that consumers and others routinely refer to BlackBerry as BB, and BB is the Complainant’s ticker symbol on the Toronto Stock Exchange’.

Annex 5: rankings dated 2008-2012 (BrandZ Top 100 Most Powerful/Valuable Global Brands for the years 2008 to 2011; Interbrand’s Best Global Brands 2008, 2009, 2010, 2011, 2012; Business Superbrands ranking 2010 , 2011 and 2012 ; General Sentiment, Media value report, brand exposure analysis for Q4 2011; Headstream’s 2012 Social Brands 100.; CoolBrands Top 20 for 2009/2010 and 2011/2012 ).

They all refer to the trade marks ‘BlackBerry’ or .

Annex 6: extract from the 2005 UK CoolBrands study, mentioning BlackBerry among the ‘coolest technology brands’.

Annex 7: market research carried out by the firm Penn, Schoen & Berland Associates, Inc., dated April 2007, conducted in 2006/2007 among mobile professionals in the UK, Spain, Germany, Italy and France, indicating an increase in the awareness of, familiarity with, or purchase consideration, in relation to the BlackBerry brand over the period in all territories.

In some statements under the graphs or in the captions of the graphs, the abbreviation ‘BB’ is used instead of Blackberry such as in ‘All mobile professionals very or somewhat familiar with BB’ but the titles of the graphs and the questions as asked to the respondents refer to the trade mark ‘BlackBerry’.

Annex 8: articles from the press of various EU countries (partially translated) dated 2013-2015 concerning the release and commercial success of the opponent’s IT solutions, and telecommunication devices. They refer to ‘BlackBerry’, ‘BBM’, ‘BES12’, or feature the sign .

Annex 9: articles from the Belgian, Dutch, UK, French and Spanish press, (partially translated) dated 2009-2016. None mentions a ‘BB’ trade mark or even ‘BB as an acronym of BlackBerry.

The term ‘BlackBerry’ is systematically used in the articles as can be seen from the titles below

o Belgium/Netherlands: ‘Blackberry super popular among Amsterdam Youths’; ‘BlackBerry: we are still market leaders in the Netherlands’; ‘Alicia Keyes becomes Creative Director at BlackBerry’; ‘BlackBerry 10: something for everyone’; ‘The BlackBerry Priv is available in Belgium’.

o United Kingdom: ‘BlackBerry is UK’s top smartphone — yet again’; ‘BlackBerry Q10 is “fastest-selling ever” at Selfridges as corporates snap it up’, ‘David Cameron: I can manage the country on my BlackBerry’, ‘Why Kim Kardashian has a stash of Blackberry phones’;

o France: an article referring to Barack Obama being deprived of his BlackBerry, another indicating that Nicolas Sarkozy had to renounce his BlackBerry after being elected President; other articles are entitled ‘The BlackBerry, the mobile phone that knows how to manage emails triumphs with executives’, ‘BlackBerry enters the “tactile era” with its BlackBerry Z10’, ‘BlackBerry becomes one of the five best-selling mobiles in the world’.

o Spain: ‘BlackBerry wins markets despite iPhone media boom’.

Annex 10: photographs of celebrities holding a BlackBerry smartphone such as Beyonce Knowles (with the caption ‘They’re Addicted To Their BlackBerrys!), Madonna, Mariah Carey, Tom Cruise, Michael Douglas, Leonardo di Caprio (‘Actor, Leonardo Dicaprio, makes no bluff when it comes to being a BlackBerry user. He was recently caught on camera rattling off a picture with his BlackBerry Q10…’), Angela Merkel. The trade marks visible on these documents are ‘BlackBerry’ and .

Annex 11: list of awards received by the opponent since 1994 presented as tables/lists of an internal nature, or as published on the opponent's website. For example:

o BlackBerry Bold 9000 named ‘Best Business Device’ at the Mobile Industry Awards 2009 (UK);

o BlackBerry solution won awards for the ‘Best small business product’ in the Start Your Business awards of 2010 (UK);

o BlackBerry Enterprise Server v5.0 named ‘Best Mobile Enterprise Product or Service’ at the Mobile World Congress in 2010 in Barcelona;

o BlackBerry Z30 named ‘Consumer Product of the Year’ in the Best in Biz Awards 2014.

Annex 12: rankings ‘Global 2000 Leading Companies’ for 2011, 2010, 2009 and 2008 from https:www.forbes.com which mention the opponent’s company (Research In Motion).

Annexes 13-14: rankings already submitted in Annex 5 not mentioning the trade mark or abbreviation ‘BB’.

Annex 15 rankings Brand Finance Global 500 for 2010, 2011, 2012 including ‘BlackBerry’. The first ranking refers to battles of giants including the battle .

Annex 16: FT (Financial Times) Global 500 2011 and 2010 including the opponent (Research in Motion).

Annex 17: Siegel+Gale’s Global Brand Simplicity Index 2011, 2012, 2014 and 2015 (and same for the UK, the Middle East, India, China), referring to ‘BlackBerry’.

Annexes 18-19: The Centre for Brand Analysis’ Business Superbrands Official Top 500 and Headstream’s 2012 Social Brands 100 as already included in Annex 5.

Annex 20: Landor’s 2007 report ‘Using brands to drive business results - The third annual Breakaway Brands valuation study’ dated 2007 including a section about the trade mark ‘BlackBerry’ (‘When BlackBerry perfected the technology to launch a product with full email capability on wireless phone networks, they offered busy professionals a truly unique tool: a userfriendly device ..; BlackBerry quickly became the ultimate businessperson’s status symbol’). The term ‘BB’ appears with the meaning of ‘Before BlackBerry’

Annex 21: Forbes’ ranking of the most powerful brands for 2013 including ‘BlackBerry’.

Annex 22: documents referring to awards attributed to BlackBerry devices (2007-2009) (ifDesign awards, CRN award, Red Dot awards, etc). (for example to the BlackBerry Key Two smartphone, the BlackBerry Enterprise Partner Program for Solutions Providers, the BlackBerry PRIV, AtHoc by BlackBerry, WatchDox by BlackBerry Enterprise File Sync and Share, BLACKBERRY DTEK50, BLACKBERRY WORKSPACES, BLACKBERRY PASSPORT, BLACKBERRY Z30, BLACKBERRY Q10 and BLACKBERRY Q5, BLACKBERRY BOLD 9900, BLACKBERRY STYLE, BLACKBERRY PLAYBOOK, BLACKBERRY CURVE 8330, BLACKBERRY PEARL, etc).

In three of the documents, the reference to BlackBerry Ltd is followed by its stock/ticker symbol (‘BBRY’ as regards the Nasdaq Stock Exchange and ‘BB’ as regards the Toronto Stock Exchange).

The annex also includes two documents from a company called Liquid Agency: these are entitled ‘Brand Impact Report 2008’ and ‘Brand Impact Awards 2007’. They mention ‘RIM BlackBerry’.

Annex 23: extracts from the opponent’s Facebook page ‘liked’ by more than 25 million persons. They feature the sign .

Annex 24: extracts from the opponent’s Twitter page with more than 4.5 million followers. The display name and user name(handle) of the account specifically dedicated to mobile phones are .

Annexes 25-27: printouts from the opponent’s social networks (YouTube channel, Linkedin, Instagram). They do not feature the sign ‘BB’.

Annex 28: extracts from the opponent’s Facebook pages dated with the internet archive Wayback machine. One post by a follower refers to the ‘new BB-8900’ and his new ‘BB-friends’ and another to the ‘BB Storm’.

Annex 29: a list of the Facebook ‘Markenranking’ for the years 2010 to 2012 established by the German company Werben & Verkaufen, in which the BlackBerry brand is listed among the top 50 worldwide brands with the highest number of Facebook fans.

Annex 30: a document dated 2016 issued by the opponent entitled ‘The CIO’s Guide to UEM’ (concerning unified endpoint management, which encompasses management, security and identity across mobile devices). It presents the BlackBerry Enterprise Mobility Suite as a solution for companies with the highest security requirements or that must achieve regulatory compliance in mobility.

Annex 31: extracts from a brochure entitled ‘BlackBerry - Customer Success Stories – Serious Mobility for Serious Business’, dated 2014. Many articles refer to ‘BBM’ but none to ‘BB’.

Annex 32: a document printed from www.gov.uk to show that BlackBerry’s Enterprise Mobility Management solutions have been adopted by the UK government.

Annexes 33-35: documents in German partially translated entitled ‘Worldwide companies trust on BlackBerry’ (It refers to the opponent’s EMM solutions including BBM); ‘The complete solution for your business communication BES12 makes your Enterprise Mobility Management (EMM) simple, secure and flexible’, ‘BES12: The extremely secure multi-OS EMM solution by BlackBerry’).

Annex 36: a document in English entitled ‘Why the world’s leading businesses trust BlackBerry’ issued by the UK-based company Livvy’s.

Annex 37: several articles referring to the fact that BlackBerry is considered a leader by Forrester Inc. and Gartner (research and advisory firms providing IT related insight for business leaders). The trade mark referred to is ‘BlackBerry’ even in the graphs such as:

However, in one article from https://www.gartner.com dated 2016, there is a reference to ‘those who continue to use BB10s and older models’ (BlackBerry is mentioned several times in this same document).

In another document dated 2016, the expressions ‘BBRY’ and ‘BB’ appear under the name ‘BlackBerry Ltd’ at the top of the document as the stock/ticker symbols of the opponent on the Nasdaq and Toronto stock exchanges.).

Annex 38: articles reporting on the success of the opponent’s software and IT services. (‘The performance of BlackBerry’s software pleases the markets’, ‘Software and Services revenue Doubles in Q2 for BlackBerry’; ‘BlackBerry Reports Strong Software Revenue and Positive Cash Flow for the Fiscal 2016 First Quarter’ (the name of the company in the subtitle is followed by the NASDAQ and Toronto stock exchanges ticker symbols ‘BBRY’ and ‘BB’); ‘The Suite Life: BlackBerry Enterprise Mobility Suite Uptake Propels “Robust” Software Growth for Q1 2017’, ‘BlackBerry Reports 89% Growth In GAAP Software & Services Revenue’; ‘BlackBerry Reports Record Software and Services Revenue for Q1 Fiscal 2017’ (which mentions in the subtitle the NASDAQ and Toronto stock exchanges ticker symbols ‘BBRY’ and ‘BB’)).

Annex 39: list of BlackBerry products from https://en.wikipedia.org/ (not referring to any ‘BB’ product).

Annex 40: press releases published on the opponent’s website regarding the introduction of its devices in the UK. These are referred to as BlackBerry 7230, BlackBerry 7100t and 7290, Blackberry 8700g, BlackBerry 7130g, BlackBerry Pearl, etc.

Annex 41: documents to show that the opponent’s smartphones were sold by distributors of smartphones in the UK (Clove, T-Mobiles, Ingram Micro Mobility (2007-2014) showing the BlackBerry 8228, BlackBerry Storm 9500, RIM BlackBerry Curve (Javelin), BlackBerry Bold 9000, BlackBerry Bold 9900, BlackBerry Torch 9860, BlackBerry Curve 9360, BlackBerry Torch 9810, BlackBerry Bold 9780,BlackBerry Bold 9780, BlackBerry Z10, BlackBerry Q10, BlackBerry Q5, BlackBerry Curve 9320, BlackBerry 9720, Blackberry Pearl 8100g etc.

One model out of all those shown is referred to as ‘BlackBerry Curve (BB Curve 8520)’.

Annex 42: extracts from the websites of smartphones distributors in France dated through the internet archive Wayback machine (2009-2016). The smartphones are referred to as RIM BlackBerry 8100, BlackBerry 9500 Storm, BlackBerry Curve 8990, BlackBerry 9000 Bold, BlackBerry Curve 8520 (this time not referred to as BB Curve), BlackBerry Curve 9300, BlackBerry Playbook 16 GO WIFI, BlackBerry Q5. The websites offer the possibility to filter the models according to their brand including the ‘BlackBerry’ brand.

Annexes 43-45: same types of documents from distributors of smartphones in the Benelux, Italy and Denmark in which the trade marks used are BlackBerry or

Annex 46: documents related to campaigns by the main EU telecom operators for ‘BLACKBERRY’ ( ) smartphones.

Annex 47: a very large number of photographs related to promotional campaigns for BlackBerry smartphones in France, in the form of in-store campaigns, banners, online store campaigns, and advertisements in leaflets, in newspapers, in newsletters and on billboards. The opponent indicates that these campaigns concern smartphone models launched between 2012 and 2015. The indication ‘BB’ next to some photographs has been added by the opponent on the blank page on which the photos have been arranged for the purpose of these opposition proceedings (the trade mark on the photographs themselves is BlackBerry for example):

Annex 48: according to the opponent’s explanations, pictures for the launch in the Netherlands of the BlackBerry Z10 in 2013.

Annexes 49-51: pictures-advertising materials showing the opponent’s promotional activities (press advertisements, billboard advertisements and advertisements in newsletters) in relation to its own devices, in several languages (English, German, Dutch and French) for various models of BlackBerry smartphones.

Annex 52: printout from websites in English, dated 2013 and 2014 related to the sponsoring of the Formula 1 Mercedes team by BlackBerry. The photograph of the car is as follows:

One of the printouts (from the website of the Financial Times) includes a quote from BlackBerry’s chief marketing officer in which he refers to the ‘new platform BB10’. The product is otherwise referred to as BlackBerry 10 everywhere else.

Another, from Mercedes’ website, mentions that ‘EffectiveMonday, February 4, 2013, the Company commenced trading under its new ticker symbol ‘BB’ on the Toronto Stock Exchange and ‘BBRY’ on the Nasdaq Stock Exchange’.

Annex 53: extract from http://www.whois.com concerning the domain names berryhub.com, blackberry.in, blackberrymobile.com, blackberrymobile.in, blackberryworld.com, myblackberry.com.

Annexes 54-55: annexes specifically marked as confidential consisting of tables on blank pages entitled ‘CONFIDENTIAL EXHIBIT 54 – R&D Expenditure’ and ‘Confidential exhibit 55 – Global sales, BLACKBERRY marks’ indicating amounts in USD.

Annex 56: Extract from the Lexico online dictionary indicating the definition of the English word ‘safeguard’.

Annexes 57-60: decisions from the EUIPO, WIPO’s Arbitration and Mediation Center as well as the French national IP office or French courts concerning actions initiated by the opponent, in favour of the opponent, none addressing the issue of the reputation or enhanced distinctive character of the opponent’s trade mark ‘BB’.

In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 22-23; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 34).

The evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

The earlier mark is the word mark ‘BB’. Virtually all of the 60 annexes/totalling 2200 pages (articles, leaflets, printouts from websites, technical documents, rankings, prizes and awards, confidential documents regarding advertising expenses and sales, decisions from IP offices, etc.) do not contain any reference to the trade mark or even the term ‘BB’ and refer only to the trade marks ‘BlackBerry’, or to a much lesser extent or ‘BBM’.

The scarce references to the expression ‘BB’ in very few documents do not indicate recognition of the trade mark ‘BB’ on the part of the public in the European Union.

Indeed, the vast majority of these references do not even indicate an actual ‘trade mark’ use of the term namely use on the market by the trade mark proprietor or an authorized person in the context of sales or promotional activities as the indication of the commercial origin of goods and services.

The mere fact that ‘BlackBerry’ is shortened as ‘BB’ for ease of reference does not amount to trade mark use as long as the products referred to are not actually branded or marketed as ‘BB’. In any case, the evidence contains only a handful of such uses of the term (the two Facebook posts (annex 28), the article which reproduces a sentence pronounced by an employee of the opponent (annex 37), the article from Gartner’s website in which ‘BB10’ is used once but which otherwise contains several references to ‘BlackBerry’ in full letters (annex 52), the caption of the graphs in one report (annex 7), the explanations regarding the photographs submitted added by the opponent itself next to the photographs for the sake of these proceedings (annex 47)).

The two WIPO decisions which just briefly mention that ‘BB’ is commonly used as the abbreviation of ‘BlackBerry’ (it is not clear if this is mentioned as a fact admitted by WIPO or as part of the complainant’s arguments) do not imply use of the term as a trade mark either but again just use for ease of reference.

Other instances of non-trade mark use are in the user name/handle of the opponent’s Twitter account for mobile phones ‘@BBMobile’ whereas the display name of the account (which is the name that people usually associate with the account) is ‘BlackBerry Mobile’ in full, or on the Toronto and New York Stock Exchanges as the ticker symbol of the opponent (whereas it is clear that BBRY not BB is used on the Nasdaq Stock exchange contrary to the opponent’s contentions).

In the Opposition Division’s view, the only reference to the term ‘BB’ which can be accepted as direct trade mark use is in relation to one smartphone model in one leaflet (annex 41). This is in sharp contrast with the fact that the evidence shows that the opponent has launched countless models of smartphones on the European Union market all always marketed/branded with the term ‘BlackBerry’ in full.

It is clear that no awareness of the trade mark ‘BB’ on the part of the public can be inferred from the documents submitted which in fact hardly reflect even any use of this trade mark.

The evidence is overwhelmingly about the trade marks ‘BlackBerry’, or to a much lesser extent . For the sake of completeness, it is clarified that any reputation of these trade marks which could be inferred from the evidence is irrelevant regarding the trade mark ‘BB’ at issue.

According to caselaw, to establish the reputation of a trade mark on the basis of evidence relating to the use and well-known nature of a different trade mark, the former must be included in the latter and play therein ‘a predominant or even significant role’ (21/05/2005, T-55/13, F1H20 / F1 et al., EU:T:2015:309 § 47). When the earlier mark has been used as part of another mark, it is incumbent on the opponent to prove that the earlier mark has independently acquired a reputation (12/02/2015, T-505/12, B, EU:T:2015:95, § 121).

These requirements formulated by the Court are manifestly not met in this case as the two letters ‘B’ do not form an independent element of the trade marks ‘BlackBerry’/ .

Along the same lines, notwithstanding the fact that the opponent explains that the figurative trade mark consists of two interlaced letters ‘B’, the public is not likely to perceive the trade mark as such. The so-called letters ‘BB’ are so highly stylised that they are not recognisable even when used in conjunction with the term ‘BlackBerry’ and the evidence does not even indicate any effort on the part of the opponent which may have led to such perception of this symbol/emblem.

For the sake of avoiding any doubts, it is clarified that the same applies in relation to the opponent’s trade mark ‘BBM’ in which ‘BB’ does not constitute an independent element.

Considering the manifestly insufficient/irrelevant nature of the evidence submitted, the Opposition Division concludes that the opponent has failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected under these grounds.

 

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 and services

 

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

 

Class 9: Computer software in the fields of Mobile Device Management (MDM), Mobile Applications Management (MAM), Mobile Security Management (MSM), Mobile Information Management (MIM), and mobile Identity and Access Management (IAM); computer software in the field of Enterprise Mobility Management (EMM) for the operation, management, security and maintenance of networks; computer network connectivity software, namely, software and middleware used to allow software applications to interface with mobile and remote devices and to allow connectivity, memory storage, and device management, all via a computer network; computer software to allow network administrators to monitor, manage, and quarantine devices that are granted access to a network; Internet of things (IOT) management software platform consisting of downloadable cloud-based software, mobile and desktop applications, and premise-based gateway agent software; software for uploading, monitoring, analyzing and reporting on data acquired from network and Internet-connected devices; device driver software; cloud computing software; internet connectivity software; software for use in managing device-to-device, device-to-cloud and cloud-to-device communications; computer software for machine-to-machine (M2M) communication, remote data collection and process control; software for performing calculations and transformations on data; computer software for asset tracking; software to track and manage IP-enabled machines and other connected devices; Software Development Kits (SDKs), Application Programming Interface (API), Enterprise Application Integration (EAI) software for creating software and applications related to machine to machine (M2M) devices, network and Internet connected devices, and IOT devices; downloadable middleware for software application integration; downloadable middleware for providing an interface between network or Internet-connected devices and enterprise software applications; software to collect, filter and process data; computer software for data transmission, storage, retrieval, filtering, processing, reproduction and integration; software for sending, receiving and analyzing data from network and Internet-connected devices; software for processing rules and sending dispatches; Mobile phones, smart phones, tablet computers and wireless communication devices; accessories for mobile phones, smart phones, tablet computers and wireless communication devices, namely, headsets and earphones, phone chargers, battery chargers, mounts, cradles and holders for hands-free phone use, charging and docking stations, cell phone and tablet computer protective cases, protective covers and cases, cell phone holsters, and speakers; Computer operating systems; computer software for mobile phones, portable media players, and handheld computers, namely, software for sending digital photos, videos, images, and text to others via the global computer network; computer communication software for the synchronization, transmission and sharing of data, calendar, content and messaging between one and more electronic device; computer software for scheduling, hosting and participating in video conferences; intrusion detection software; software for monitoring, analyzing, reporting, preventing, and resolving security and privacy risks; software for identifying, terminating, and removing malicious software programs; software for monitoring mobile devices; antivirus and security software for mobile devices; mobile device software for tracking, locating, locking and wiping mobile electronic devices; encryption and decryption software; sd-cards; computer software for performing data security functions in the field of cryptographic network security; computer software for automating a process for authentication of identity using existing databases in connection with the issuance and management of digital certificates used for authentication or encryption of digital communications over the Internet and other computer networks; computer software, namely encryption software to enable secure transmission of digital information; computer software to integrate managed security, namely, virtual private network (VPN), public key infrastructure (PKI), digital certificate issuance, verification and management; Software for providing initiation, distribution, delivery and response tracking of emergency notifications to users via personal communication devices and public mass communication devices; software for supporting exchange of information and collaboration processes amongst organizations and people during emergency and crisis situations; software for the purposes of data collection, monitoring, and mass notification services for managing emergency, and crisis and business critical situations and improving crisis communications capability; software for the transmission of mass notification emergency information via audio, video and electronic communications networks and devices, including social networks; software for managing and analyzing data feeds and data inputs in the field of crisis reporting, communication and management, and for sending notifications through multiple IP network channels and delivery services; software for loading data from personnel directories, and managing users for purpose of crisis communication; software for managing organization directories and connections across organizations for the purpose of connecting them and facilitating collaboration before, during and after crisis situations; software for locating personnel for security and safety purposes using a global positioning system, user self-reporting, and other locating means; software for electronically monitoring, detecting and reporting on alarms, alerts, emergencies, hazards, security threats, and dangerous weather; software for notifying individuals and organizations of a changed status or condition of a sensing device or input feed via network based message alerts; downloadable software in the nature of a mobile application for sending, receiving, confirming and responding to alerts, messages, and notifications via wireless communications networks or the Internet; desktop software applications for providing desktop notifications that capture the user's attention with audio-visual signals and allow users to confirm, respond to notifications or receive additional information related to notifications; computer hardware and software communication system enabling users to manage information and data provided to the system and to control the delivery of messages through the system.

Class 38: Telecommunication services, namely, data transmission and reception services via telecommunications networks; electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; instant messaging services; Providing electronic message alerts via the Internet, global computer and telecommunications networks, and mobile communications devices to deliver emergency notifications and facilitate collaboration amongst individuals and organizations before, during and after critical situations; providing mass notification services through all communication devices, telephones, tablets, smartphones, email, text messaging, and instant messaging; providing electronic transmission of data and digital messaging via mobile handheld devices and via wired and wireless communication devices before, during and after critical situations; telecommunications services that enable users and organizations to electronically transmit messages, text, multimedia content, videos, audio, animation and images via a global computer network before, during and after critical situations; providing multiple user access to interactive databases through web sites on a global computer network to manage, administrate and use crisis communication capabilities; providing electronic transmission of converged data, address location information, text, pictures, and streaming media, all for use in crisis communications; providing telecommunication connectivity services for transfer of messages, audio, visual, and data information for crisis communications; electronic messaging services, namely, providing services to access, process, and transmit critical, time-sensitive notifications to individuals and organizations.

Class 42: Mobile Device Management (MDM) services in the field of Enterprise Mobility Management (EMM), namely, remote management of mobile devices' software applications, access, and security; software as a service (SAAS) services in the field of Enterprise Mobility Management (EMM), featuring software for Mobile Device Management (MDM), Mobile Applications Management (MAM), Mobile Security Management (MSM), Mobile Information Management (MIM), and mobile Identity and Access Management (IAM); software as a service (SAAS) services in the field of Enterprise Mobility Management, featuring software for the operation, management, security and maintenance of enterprise networks, data center management, resource management and performance optimization; software as a service (SAAS) services featuring computer software in the field of electronic file security to allow users to encrypt, electronically watermark, provide restricted access to, and provide secure transmission and tracking of electronic documents and other electronic and digital files; Platform as a service (PAAS) services featuring computer software for security, management, collaboration and application services for mobile devices; computer services, namely, providing a virtual computing environment accessible via the Internet for the purpose of providing mobile communications data archiving, access to computing and data storage facilities, namely storage servers for archiving email, phone call logs, SMS/MMS messages, and other electronic data; Platform as a service (PAAS) services featuring computing platform and solution stack that allows users or enterprise software applications to interface with, connect to and manage remote devices and to provide messaging, management and memory storage services; Infrastructure as a service (IAAS) services featuring computer software platforms for creating, managing, and deploying cloud computing infrastructure services; Design and development of computer software and middleware for others; computer network design for others; technical consulting with regard to computer systems, computer network connectivity hardware and computer network connectivity software and middleware; computer software services, namely, development, maintenance, repair, installation, troubleshooting of problems, support in the nature of diagnosing problems, upgrade and updating, authoring, provision of information, consultation, design and customization of computer software and middleware; technical support services with regard to computer systems, computer network connectivity hardware and computer network connectivity software and middleware, namely, troubleshooting and diagnosing of problems; computer services, namely, providing remote management of remote devices via computer networks; Providing non-downloadable software for managing machine-to-machine (M2M) and Internet of Things (IoT) communication; providing machine-to-machine (M2M) and Internet of Things (IoT) communication integration services, namely, the integration of disparate computer systems, networks and software through the application of wireless communication technology to facilitate M2M and IoT communication via web based browsers, personal digital assistants, mobile phones, embedded microprocessors, sensors and other electronic devices; providing a secure website in the nature of a web hosting platform for allowing users and enterprise software applications to interface with remote devices and to allow connectivity, memory storage, device management, device monitoring, device tracking, and device auditing, all via a computer network; providing temporary use of on-line non-downloadable software allowing users and enterprise software applications to interface with remote devices and to allow connectivity, memory storage, device management, device monitoring, device tracking, and device auditing, all via a computer network; Software as a service (SAAS) services featuring application software that allows users or enterprise software applications to interface with, connect to and manage remote devices and to provide messaging, management and memory storage services; Technical support services, namely, installation, administration, and troubleshooting of web and database applications; technical consulting and assistance with computer-based information systems and components, namely, technical consulting services in the fields of Mobile Device Management (MDM), Mobile Applications Management (MAM), Mobile Security Management (MSM), Mobile Information Management (MIM), mobile Identity and Access Management (IAM), datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; Design and development of crisis communication systems comprised of computer hardware and software; engineering and computer systems analysis in the field of crisis communication systems; computer services, namely, providing online system management services that allow users to remotely view, monitor, program, operate and control crisis communication systems; technical research in the field of crisis communication technology; testing of crisis communication systems; cloud computing featuring software for providing crisis communication through multiple IP network channels and delivery services; computer services, namely, integration of private and public cloud computing environments for crisis communication; computer services, namely, cloud hosting provider services for crisis communication; computer services, namely, installation of software for private cloud computing for crisis communication; consulting services in the field of cloud computing for crisis communication; computer services, namely, creating an online community for registered users to participate in discussions, get feedback from their peers, form virtual communities, invite other organizations to the community and engage collaboration in the field of security and crisis communication and management; software as a service (SAAS) services featuring software for use in sending, receiving, confirming and responding to alerts, messages, and notifications in the field of crisis communication and management; software as a service (SAAS) services, namely, hosting software for use by others for use in sending, receiving, confirming and responding to alerts, messages, and notifications in the field of crisis communication and management; providing online non-downloadable computer software for the purposes of data collection, monitoring, and mass notification services for managing emergency and crisis situations and improving crisis communications capability.

The contested goods are the following:

Class 9: Infrared detectors; Radar detectors; Earphones; Smartwatches; GPS navigation devices; Personal security alarms; Electronic anti-theft alarms; Headphones; Cabinets for loudspeakers; Rechargeable electric batteries; Battery chargers for mobile phones; Battery chargers; USB cables; Video cameras; Cameras; Holders adapted for mobile phones; Software for mobile phones; Photographic equipment; Adapters [electricity]; Glasses.

Class 11: Electric fans; Lighting; Lamps; LED flashlights; Air purification apparatus; Air purification machines; Refrigerators; Sterilization apparatus; Humidifiers; Grills; Electric kettles; Cookers; Coffee machines; Kitchen ranges; Kitchen machines (Electric -) for cooking; Apparatus for sanitary purposes; Disinfection apparatus; Heaters; Refrigerating and freezing equipment; Personal heating and drying implements.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’ used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed after the expression.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 earlier mark is registered for the broad category of wireless communication devices which includes devices using satellite communication, infrared communication, radio communication, Wi-fi or Bluetooth communication. The contested smartwatches; GPS navigation devices; radar detectors; infrared detectors are included in or overlap with the opponent’s wireless communication devices. Therefore, they are identical.

The contested earphones; headphones; rechargeable electric batteries; battery chargers include as broader categories the opponent’s accessories for mobile phones, smart phones, tablet computers and wireless communication devices, namely, headsets and earphones, battery chargers. The contested software for mobile phones includes as a broader category the opponent’s computer software for mobile phones, namely, software for sending digital photos, videos, images, and text to others via the global computer network. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested battery chargers for mobile phones; holders adapted for mobile phones are identically listed in the opponent’s list of goods (including synonyms).

The opponent’s wireless communication devices are an essential part of the contested personal security alarms; electronic anti-theft alarms as they are used for transmitting the information via network between the alarm unit and the surveillance centre. It follows that these goods are at least similar as they share the same producers, relevant public and distribution channels. Additionally, they are complementary.

The contested video cameras; cameras; photographic equipment and the opponent’s smartphones share the same distribution channels and target the same public. Furthermore, they are used for the same purpose and are in competition with each other because smartphones are used for taking photographs and shooting videos. Therefore, they are similar.

The contested cabinets for loudspeakers refer to enclosures in which loudspeakers are mounted for a better sound. The opponent’s trade mark is registered for speakers (which is the same as loudspeakers) for wireless communication devices (which include tablets or laptops). Laptops/tablets are commonly used nowadays as the main household apparatus to reproduce music instead of formerly dedicated audio equipment such as record players or hi-fi stereo equipment. For sound optimization when listening to music at home, consumers connect their laptops/tablets to high quality loudspeakers. Therefore there is no material difference between speakers for wireless devices and speakers for stereo equipment. The contested cabinets for loudspeakers and the opponent’s speakers (for wireless devices) are commonly manufactured by the same companies, and usually available from the same distribution channels, they target the same public and there is a link of complementarity between them. Therefore, they are similar.

The contested USB cables; adapters [electricity] are accessories for computers and other electronic devices which are commonly provided by the same companies and distributed in the same outlets as the opponents’ accessories for mobile phones, smart phones, tablet computers and wireless communication devices, namely, phone chargers, battery chargers, charging and docking stations,. These goods target the same public and there is a link of complementary between them. Therefore, they are similar.

The contested glasses do not share any links in terms of the relevant factors with the opponent’s goods in Class 9 and services in Classes 38 and 42. The goods in Class 9 cover communication devices and specific accessories and software. The contested services in Class 38 are related with telecommunications and those in Class 42 are IT related services. Glasses are intended for protection of the eyes/improvement of the sight. The goods and services at issue differ in their nature and purpose and are not provided by the same companies or distributed through the same channels. They are neither complementary or in competiton. Therefore, they are dissimilar.

Contested goods in Class 11

The contested goods are devices for lighting, improving the ambient air, cooling/freezing, heating, cooking/making coffee, disinfecting/eliminating germs and for sanitary purposes.

The opponent argues that smart appliances are becoming a household norm and that consumers have become accustomed to household appliances manufactured by mobile and computer technology companies and that these goods would be sold in the same outlets and target the same public. Although it is true that some manufacturers of mobile phones and other communication appliances also manufacture household appliances and that these goods target the same public, this is not the rule and tends to apply only to a few big players on the market. Furthermore, even if household and kitchen apparatus can be controlled via telecommunication networks nowadays, this is not enough to make these goods similar considering that the link is not narrow enough to amount to complementarity and that the respective nature, method of use and purpose of these goods are very different. Additionally, although some of the goods at issue may be found in the same shops or department stores, as for example, those specialized in electronics, those shops and department stores usually separate computer or/and smartphone related sections from household, kitchen, refrigerating or heating apparatus related sections or areas.

The contested goods and the opponent’s tablet computers/smartphones do not have any relevant links with the opponent’s communication devices and their accessories or software, telecommunication and IT software related services. Therefore, they are dissimilar (as regards the comparison between telecommunication apparatus and kitchen appliances, see 29/08/2012, – R 2194/2011-2, Free'e / FREE LA LIBERTÉ N'A PAS DE PRIX (FIG. MARK) et al., § 27-31).

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 at issue are mainly intended for the general public whose degree of attention may vary from average to high depending on the goods.

In particular the degree of attention is considered high in relation to goods intended for safety purposes such as the contested alarm systems and their components.

The degree of attention is likely to be also relatively high in relation to goods of a technical nature such as tablet computers or smartphones as these goods are usually expensive and not bought on a daily basis (02/12/2008, T-212/07, Barbara Becker, EU:T:2008:544, § 26).

In contrast, the degree of attention is considered average in relation to other goods such as battery USB cables or adapters.

c) The signs

 

BB
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 components of the signs 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 when the signs coincide in weak or non-distinctive element and/or differ in distinctive elements. In contrast, a confusion is more likely if the commonalities pertain to distinctive elements and/or the differences to weak or non-distinctive elements.

 

The term ‘BB’ which forms the earlier mark does not have any straightforward meaning in relation to the goods at issue and is, therefore, fully distinctive.

The contested sign is formed by the letters ‘BB’ followed by the verbal element ‘safeguard’ both elements being depicted in homogeneous font style. Neither element has more visual impact than the other one.

The letters ‘BB’ will be identified despite the fanciful depiction used. In particular, the first letter is clearly recognizable and the second one will also be identified despite the fact that it is partly hidden behind the first one and smaller because it has otherwise exactly the same shape/style.

The expression ‘BB’ does not evoke any meaning either in relation to the goods at issue and is, therefore, distinctive to a normal degree.

The other element of the contested sign is the English word ‘safeguard’. The following definitions of the word are indicated in the extract from the Lexico dictionary submitted by the opponent: ‘NOUN a measure taken to protect someone or something or to prevent something undesirable’/’VERB protect from harm or damage with an appropriate measure’. The Collins online dictionary consulted at https://www.collinsdictionary.com on 10/11/2020 indicates the same meanings (‘VERB To safeguard something or someone means to protect them from being harmed, lost, or badly treated’/‘NOUN A safeguard is a law, rule or measure intended to prevent someone or something from being harmed’).

Based on the above definitions, the term ‘SAFEGUARD’ is considered at most weak or even non-distinctive in relation to some of the relevant contested goods. It clearly indicates the purpose of the contested personal security alarms; electronic anti-theft alarms and of the goods which may be components of such systems namely infrared detectors, radar detectors, video cameras, cameras; photographic equipment. Likewise, it is likely that the word will be perceived as indicating that the contested software for mobile phones is intended for the protection of mobile phones, for example for anti-virus protection. The relevant public may also infer from the presence of this term in the trade mark that the contested GPS navigation devices and the contested smartwatches (which are communication devices rather than watches) incorporate features for emergency situations, for example allowing vulnerable persons to be located/contacted at all times and rescued. Finally, considering that the public is well aware of the possibly harmful effects of hearing music in high voice and continuously from earphones and headphones, in particularly hearing loss or even brain damage, the term ‘safeguard’ will be interpreted as an indication that these goods incorporate some protection for the ears such as volume limiting or noise-cancelling functions.

In contrast there are no obvious links between the meaning of the word ‘SAFEGUARD’ and the remaining contested goods (Cabinets for loudspeakers; Rechargeable electric batteries; Battery chargers for mobile phones; Battery chargers; USB cables; Holders adapted for mobile phones; Adapters [electricity]) for which it is considered distinctive to a normal degree.

For the non-English speaking public the word ‘SAFEGUARD’ is meaningless and fully distinctive for all goods.

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.

Considering what has been established above in view of the at most low distinctive character of the element ‘SAFEGUARD’ of the contested sign for some goods, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Visually, the signs coincide in the two letters ‘BB’ which constitute the entire earlier mark and play an independent and distinctive role in the contested sign The coincidence is to some extent made less perceptible by the specific stylisation of those letters in the contested sign, in particular the fact that the two letters are not the same size.

The signs differ in the nine-letter word ‘SAFEGUARD’ of the contested sign which is clearly visible owing to its length and the fact that it is depicted in bold letters on the same line as the letters ‘BB’. However this difference is, for some goods, significantly attenuated by the very limited impact of the term resulting from its non-distinctive or very low distinctive character.

In relation to the goods for which ‘SAFEGUARD’ is fully distinctive, the signs are visually similar to a low degree.

For the remaining goods, the degree of similarity is considered below average.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BB’. In the Opposition Division’s view, the term ‘SAFEGUARD’ of the contested sign will be pronounced by the public even when it is perceived as being non distinctive or weak, because of its visual impact and of the fact that it is depicted in the same style and positioned on the same line as the letters ‘BB’.

Therefore, following the principles previously mentioned, it is considered that the signs are aurally similar to a low degree in relation to the goods for which the term ‘SAFEGUARD’ is distinctive to a normal degree, notwithstanding the fact that the earlier mark is fully included at the beginning of the contested sign. It is taken into account that the term ‘SAFEGUARD’ is the same length (2 syllables) as the coinciding part ‘BB’ which makes the difference clearly audible.

The degree of aural similarity is considered high for the goods in relation to which the element ‘SAFEGUARD’ is non-distinctive or weak taking into account that the differences in the stylisation of the letters ‘BB’ are not relevant in the phonetic assessment and that the earlier mark is fully included at the beginning of the contested sign.

 

Conceptually,  the relevant public will perceive the meaning of the differing term ‘SAFEGUARD’ of the contested sign whereas the coinciding element is meaningless.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, it should be taken into account that the concept has very limited differentiating impact in relation to the goods for which it is weak or non-distinctive.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as a result of its long standing and intensive use in the European Union in connection with secure technology solutions and telecommunications/ mobile technology.

However, the evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR even considering that the threshold of recognition to be proved is lower under these grounds.

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

 

e) Global assessment, other arguments and conclusion

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

 

The contested goods are partly identical and similar, and partly dissimilar to the opponent’s goods and services. The dissimilar goods are glasses in Class 9 and all of the contested goods in Class 11. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition directed at these goods cannot be successful.

The assessment proceeds in respect of the remaining goods.

The assessment is based on the perception of the English-speaking part of the public of the European Union. The earlier mark is distinctive to a normal degree. The signs are visually similar to a below average degree and aurally similar to a high degree for the identical and similar goods in relation to which the element ‘SAFEGUARD’ of the contested sign is weak or non-distinctive. The concept conveyed by that element has very reduced differentiating impact for these goods.

Likelihood of confusion 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. Indeed, it is highly conceivable that, in relation to these goods, the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that for infrared detectors; radar detectors; earphones, smartwatches; GPS navigation devices; personal security alarms; electronic anti-theft alarms; headphones; video cameras; cameras, software for mobile phones; photographic equipment, there is a likelihood of confusion on the part of the English-speaking part of the public even where the degree of attention of the public is high. 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.

For the remaining goods found identical or similar cabinets for loudspeakers; rechargeable electric batteries; battery chargers for mobile phones; battery chargers; USB cables; holders adapted for mobile phones; adapters [electricity]), the degree of visual and aural similarity is low and the term ‘SAFEGUARD’ in the contested sign introduces a conceptual difference between the signs for the public taken into consideration. It follows that the degree of similarity between the signs is not sufficient to trigger a likelihood of confusion even as regards the aforementioned goods which are identical and/or in relation to which the degree of attention of the public is average.

Furthermore, for the remaining public (non-English speaking public), despite the fact that there is no conceptual difference between the signs as the term ‘SAFEGUARD’ is meaningless, the fact remains that the signs are also visually and aurally similar to only a low degree as this word is distinctive to a normal degree and creates a clearly noticeable/audible difference between them. Furthermore, the coinciding element does not trigger any conceptual similarity which may add up to the limited visual and aural similarity. Therefore, there is no likelihood of confusion either for the remaining public as regards the contested cabinets for loudspeakers; rechargeable electric batteries; battery chargers for mobile phones; battery chargers; USB cables; holders adapted for mobile phones; adapters [electricity]).

The opponent refers to 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 previous cases referred to by the opponent are not relevant to the present proceedings because they relate to oppositions directed against trade marks including the term ‘BERRY’, upheld or partially upheld on the basis of the opponent’s trade mark ‘BLACKBERRY’ in place of ‘BB’ in the present case.

Furthermore, the opponent refers to the principle of imperfect recollection. However, the contested sign’s term ‘SAFEGUARD’ is clearly visible and audible and where it is distinctive, creates a significant difference between the signs, which is not likely to be overlooked by the public.

It follows from the above that the opposition is partly well founded and that the contested trade mark must be rejected for infrared detectors; radar detectors; earphones; smartwatches; GPS navigation devices; personal security alarms; electronic anti-theft alarms; headphones; video cameras; cameras, software for mobile phones; photographic equipment in Class 9.

For the reasons explained above, the opposition is not successful for the remaining contested goods found identical or similar in Class 9, nor for the contested goods found dissimilar.

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

 

 

Boyana NAYDENOVA

Catherine MEDINA

Kieran HENEGHAN

 

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.