OPPOSITION No B 2 196 296
Optimus-Comunicaões S.A., Lugar do Espido, Via Norte, 4470-901 Maia, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
S Quadrat Projekt- und Beteiligungsgesellschaft mbH & Co. KG, Galmeistr. 8, 59929 Brilon, Germany (applicant), represented by DTS Patent- & Rechtsanwälte Schnekenbühl und Partner MBB, St.-Anna-Str. 15, 80538 München, Germany (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all
goods and services of European Union trade mark application No
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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Mobile telephones and cards used in mobile telephones, telecommunications equipment, apparatus for communication, transmission and terminals relating to information broadcasting, transmission and reception (namely telephone exchanges, telephone and radio apparatus), computers, including magnetic data carriers, parts and fitting for all these products.
Class 16: Publications, printed matter, books, magazines and manuals.
Class 35: Advertising, commercial affairs and office functions in the field of telecommunications.
Class 37: Construction and installation of telecommunication equipment.
Class 38: Telecommunications services.
Class 42: Services relating to the study and the activity of engineers, research and development in the field of telecommunications; design and development of computer programs for telecommunications.
The contested services are, after a restriction of the application by deleting the services in Class 35 and a partial refusal of the contested mark in opposition No B 2 192 196, the following:
Class 38: Telecommunications services (included in class 38), especially collecting and transmitting messages over various networks and media; Cabling and connection services for telecommunications; Providing access to databases, information directories and telecommunications directories; Communications by fiber [fibre] optic networks; Telecommunications gateway services; Paging services; E-mail, teletext, mobile telephone and telegram services; Renting and arranging access times to databases, including in particular on the Internet; Internet provider services, namely providing access to digital networks.
Class 41: Publishing of electronic information directories.
Class 42: Computer programming; Rental services relating to data processing equipment and computers; Conducting research in databases, for others, relating to new products; Electronic data storage for others; Creating and maintenance of electronic databases (software) and software; Rental and maintenance of memory space on the Internet; Design and maintenance of Internet homepages.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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 services in Class 38:
The contested telecommunications services (included in class 38), especially collecting and transmitting messages over various networks and media; cabling and connection services for telecommunications; communications by fiber [fibre] optic networks; telecommunications gateway services; paging services; E-mail, teletext, mobile telephone and telegram services; renting and arranging access times to databases, including in particular on the Internet; Internet provider services, namely providing access to digital networks; providing access to databases, information directories and telecommunications directories are all included in the broad category of the opponent’s telecommunications services. The services are identical.
Contested services in Class 41:
The contested publishing of electronic information directories are similar to the opponent’s publications in Class 16 as they can coincide in producer. Furthermore they are complementary.
Contested services in Class 42:
The contested computer programming include, as a broader category the opponent’s design and development of computer programs for telecommunications. 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 rental services relating to data processing equipment and computers; rental and maintenance of memory space on the Internet are similar to the opponent’s design and development of computer programs for telecommunications. These services have the same providers (IT companies) and distribution channels and they target the same consumers.
The contested conducting research in databases, for others, relating to new products; Electronic data storage for others; Creating and maintenance of electronic databases (software) and software; Design and maintenance of Internet homepages are similar to the opponent’s design and development of computer programs for telecommunications as they can coincide in provider, distribution channels and relevant public.
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 services found to be identical or similar are directed at the public at large and at a professional public with specific knowledge and experience. The degree of attention will vary from average to enhanced depending on the exact nature, purpose and price of the services.
Earlier trade mark
The relevant territory is Portugal.
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 mark is a word mark ‘BOOMERANG’ and the contested sign is a word mark ‘boomerango’. In the case of word marks it is the word as such which is protected and not its written form. Therefore it is irrelevant if the mark is written in small or capital letters.
The marks have no elements that could be considered more distinctive or dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘boomerang-’ and only differ in the additional last letter ‘o’ of the contested sign. Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛boomerang’, present identically in both signs. The pronunciation differs in the sound of the final letter ‛-o’ of the contested mark, which has no counterpart in the earlier sign. The signs are aurally similar to a high degree.
Conceptually, due to the similarity of the English word ‘BOOMERANG’ and the Portuguese equivalent ‘bumerangue’, it is reasonable to assume that the public in the relevant territory will associate the earlier mark with a curved piece of hard wood typically from Australia which is made in such a way that when thrown it returns to its starting point. The term is also used to describe something that comes around again. The contested mark ‘BOOMERANGO’ will be perceived as a misspelling of the English word ‘boomerang’.
Therefore, the relevant public will perceive the signs as conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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 meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
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 services under comparison are identical and similar. The signs are highly similar on visual and aural levels on account of the shared letters ‘BOOMERANG-’. In fact, the earlier mark is fully reproduced in the contested sign. The only difference results from the additional letter ‘-o’, placed at the end of the contested sign. This difference, is not sufficient to counteract the obvious similarity residing in the sequence of the nine letters word ‘boomerang‘, which is instantly recognisable to the consumers. In addition, the signs are conceptually identical.
The visual and aural differences limited to the letter ‘o’ do not enable the average consumer, who only rarely has the chance to make a direct comparison between the different signs, to safely distinguish the marks in the context of identical or similar services. The same applies even where the relevant public has an enhanced degree of attention in relation to some of the services in question.
Considering all the above, and especially bearing in mind the lack of differentiating elements in the signs, 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 Portuguese trade mark registration No 329 882. It follows that the contested trade mark must be rejected for all the contested services.
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Ana MUÑIZ RODRÍGUEZ
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.