OPPOSITION Nо B 3 124 425

O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

PNN Soft, 4A Kommandarma Kamieneva Street, app. 63, 01133 Kyiv, Ukraine (applicant), represented by Süle Law Firm, Frankel Leo u. 84. 1/7, 1023 Budapest, Hungary (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 124 425 is upheld for all the contested goods.

2. European Union trade mark application No 18 211 704 is rejected in its entirety.

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

REASONS

On 19/06/2020, the opponent filed an opposition against all the goods (Class 9) of European Union trade mark application No 18 211 704 for the word mark ‘Bluefy’. The opposition is based on, inter alia, German trade mark registration No 302 015 107 780 for the word mark ‘BLUE 1’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 015 107 780.

a) The goods

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, converting, storing, regulating and controlling electricity; apparatus for recording, transmitting and/or reproducing sound and/or images; magnetic data carriers; records; CDs; DVDs; digital data carriers; mechanisms for coin-operated apparatus; cash registers; calculating machines; hardware for data processing; data processing equipment; fire-extinguishing apparatus; telecommunication apparatus, in particular for fixed and mobile telephony; computers; computer software; accident, radiation and fire protective clothing; helmets; spectacles, spectacle lenses, sunglasses, goggles and cases therefor; contact lenses; electronically downloadable publications; magnets, magnetic cards; coded cards; parts and accessories for all the aforesaid goods not included in other classes.

The contested goods are the following:

Class 9: Downloadable software; computer operating software; downloadable smart phone applications (software); computer software to enable browsing on global computer networks; computer software for accessing, browsing and searching online databases; computer software to enable the provision of information via the internet.

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.

The contested downloadable software; computer operating software; computer software to enable browsing on global computer networks; computer software for accessing, browsing and searching online databases; computer software to enable the provision of information via the internet are included in the broad category of, or overlap with, the opponent’s computer software. Therefore, they are identical.

The contested downloadable smart phone applications (software) are highly similar to the opponent’s computer software since these goods have the same nature, can have the same purpose and target the same relevant public. Furthermore, these goods can be produced by the same undertakings and be in competition.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or highly similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

BLUE 1	Bluefy
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). This is also the case where one part of the sign has a clear and evident meaning while the rest is meaningless.

In the present case, although the contested sign ‘Bluefy’, as a whole, does not have a meaning, it can be reasonably assumed that the public in the relevant territory will discern the element ‘Blue’.

The common verbal element ‘BLUE’ is the English word for the colour blue, which is part of the basic English vocabulary known to the relevant public in the European Union (12/11/2008, T‑281/07, Ecoblue, EU:T:2008:489, § 30). Moreover, it is close to the equivalent German word, ‘blau’. Therefore, the relevant public in Germany will understand this common element as meaning the colour blue.

According to the applicant, the element ‘BLUE’ has a rather low degree of distinctiveness as the colour blue is widely used in the IT sector. It provided a hyperlink to an article that stated that more than half of the top 100 technology companies have elements of dark blue or black in their logos.

The Office is not obliged to open hyperlinks provided by the parties in their submissions as evidence should be in the form of a printed document, or stored on a data carrier, that presents facts and has a clear content. The content of specific internet addresses may change over time and even the internet addresses themselves may change. Therefore, a hyperlink is not a reliable source of information from which to draw a conclusion.

Moreover, there is no link between the colour blue and the relevant goods. Software is a program used to operate computers or mobile phone applications. By its very nature, software is colourless, and colours are not commonly used to indicate specific types, versions or any other features of software (31/08/2016, R 664/2016‑4, Opal Blue, § 10). Therefore, since the colour blue has no direct meaning in relation to the relevant goods, the common verbal element ‘BLUE’ is distinctive.

Furthermore, the applicant argues that the contested sign ‘Bluefy’ is ‘a trade mark for a Web Bluetooth API software’ [sic] and for this reason the element ‘BLUE’ in the contested sign does not refer to the colour blue, but to an abbreviation of the term ‘Bluetooth’. However, this is a vague association and there is no reason to believe that the relevant consumer would make it, especially as the element ‘BLUE’ has another clear specific meaning. Therefore, this argument of the applicant must be set aside.

The numeral ‘1’ of the earlier mark may either be seen as a number referring, for instance, to the specific product line or version, which is common practice in branding (see further explanations in the global assessment below), or as alluding to the quality. An expression such as ‘number 1’ is frequently used in trade to refer to something of high quality in a fashionable way and, therefore, it may convey certain positive connotations. Consequently, this element is weak.

The letters ‘fy’ in the contested sign have no meaning for the relevant public and are, therefore, distinctive. According to the opponent, ‘fy’ is an English suffix, which means ‘to make, cause to be, render; to become, be made’, as such, is non-distinctive. In support of its arguments, the opponent submitted a dictionary printout, which contains examples of verbs formed with the addition of the suffix ‘fy’. However, ‘bluefy’ was not one of those examples. Furthermore, the English suffix ‘fy’ is not a basic one and is unlikely to be known by the public in the relevant territory. Therefore, this argument of the opponent must be set aside.

Both signs are word marks, therefore, contrary to the opponent’s arguments, the element ‘BLUE’ in both marks is not dominant (visually outstanding). This is because word marks have no dominant elements since by definition they are written in standard typeface. The length of the words or the number of letters is not related to dominance but to overall impression.

Visually and aurally, the signs coincide in the distinctive verbal element ‘BLUE’, placed at the beginning of both signs. However, they differ in the earlier mark’s weak element ‘1’ and the contested sign’s letters ‘fy’, both placed at the end of the signs.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Since both marks are word marks, it is the word as such that is protected. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in upper case and the other in title case.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both signs will be associated with the colour blue and taking into account the weak concept of the earlier mark’s element ‘1’, the signs are conceptually similar at least to 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 mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no clear 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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.

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). 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).

The goods are identical or highly similar and target the general and professional public, whose degree of attention varies from average to higher than average. The degree of distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree and conceptually similar at least to an average degree, as they share the distinctive verbal element ‘BLUE’, positioned at the beginning of both signs, which is the part that first catches the consumers’ attention. The differences between the signs lie in the earlier mark’s weak element, ‘1’, and the contested sign’s letters ‘fy’, both of which are at the end of the signs, where the attention of the public is not normally focused. In an overall assessment of the marks, the differences in the signs are not sufficient to counteract the similarities and enable the relevant public to safely distinguish between them.

It is highly conceivable that 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant argued that the opponent had filed the application for the earlier mark in bad faith. However, this cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 015 107 780. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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

Holger Peter KUNZ

Lidiya NIKOLOVA

Katarzyna ZANIECKA

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.