OPPOSITION No B 2 423 955

Keeeb GmbH, Neuer Pferdemarkt 23, 20359 Hamburg, Germany, (opponent), represented by Nesselhauf Rechtsanwälte, Alsterchaussee 40, 20149 Hamburg, Germany (professional representative)

a g a i n s t

Hubble Connected Limited, 2nd Floor, The Grand Pavilion Commercial Centre, 802 West Bay Road, P O Box 10338, Grand Cayman 1 1003, Cayman Islands, (applicant), represented by Oakleigh IP Services Limited, Unit 19, Wrotham Business Park, Barnet, Hertfordshire EN5 4SZ, United Kingdom (professional representative).

On 26/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 423 955 is upheld for all the contested goods and services.

2. Community trade mark application No 13 239 603 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 239 603. The opposition is based on, inter alia, German trade mark registration No 302 012 001 133. The opponent invoked Article 8(1)(b) CTMR.

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

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 302 012 001 133.

1. The goods and services

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

Class 9: Software

Class 42: Design and development of computer hardware and software

The contested goods and services are the following:

Class 9: Baby monitors; cameras equipped with microphones and speakers for use in transmitting and receiving audio and visual content; software for transmitting and receiving audio and visual content; software for use in uploading, downloading, posting, sharing, tagging, rating, transmitting, receiving, editing, compressing, extracting, encoding, decoding, playing, storing and organising audiovisual content, information and multimedia content over the Internet and other communications networks; software for broadcasting video clips, audio clips, images, photos and other multimedia content over the Internet and other communications networks; software platforms for providing programmatic interfaces, for third parties to access website content, information and data; telephones; telephone apparatus; mobile telephones, cordless telephones and telephone handsets; portable communications devices; electric and electronic apparatus and instruments for communication and telecommunication; navigation apparatus for vehicles; satellite navigation apparatus; road map display apparatus for assisting the navigation of a vehicle; radios; DAB (digital audio broadcasting) radios, Internet radios, digital radios, apparatus for use in audio-visual multimedia streaming devices and audio-visual communications; baby monitors, baby alarms; televisions, DVD players, liquid crystal display, DVDs; apparatus for recording, transmission, amplifying or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; computer software, parts fittings and accessories for all the aforementioned goods.

Class 38: Electronic transmission and streaming of digital media content for others via global and local computer networks; electronic transmission and delivery of data, messages and information; providing audio, text and video broadcasting services over the Internet, computer and other communications networks; video broadcasting services over the Internet or other communications networks featuring the uploaded, posted and tagged videos of others; providing access to third party websites via a universal login and accessories for all the aforementioned goods.

Class 42: Development of new technology for others in the nature of interoperability standards; development of interoperability standards for remote monitoring services of heating, ventilating and air conditioning apparatus; research and development for new products for others; technical consultation and research in the nature of interoperability standards; development of new technology for others in the fields of consumer electronics and wireless communications; research and development of standards for products and services in the fields of consumer electronics and wireless communications; testing, analysis, and evaluation of wireless communication networks, home area networks, commercial networks, industrial networks, and utility company networks of others for the purposes of certification; technical support services, remote monitoring services of heating, ventilating, and air conditioning apparatus; and technical consultation and research in the field of consumer electronics.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 contested software for transmitting and receiving audio and visual content; software for use in uploading, downloading, posting, sharing, tagging, rating, transmitting, receiving, editing, compressing, extracting, encoding, decoding, playing, storing and organising audiovisual content, information and multimedia content over the Internet and other communications networks; software for broadcasting video clips, audio clips, images, photos and other multimedia content over the Internet and other communications networks; software platforms for providing programmatic interfaces, for third parties to access website content, information and data; computer software are included in the opponent’s computer software or simply identical to. These goods are identical.

The contested telephones; telephone apparatus; mobile telephones, cordless telephones and telephone handsets; portable communications devices; electric and electronic apparatus and instruments for communication and telecommunication are devices and apparatus for telecommunication. These may have access to internet and include devices that rely on wireless connections. Such goods rely on communications control software to successfully support their functions. There exists a link of complementarity between these goods and the opponent´s software since the contested devices and apparatus can use the opponent’s software. The goods have the same distribution channels and target the same users. They may also originate from the same manufacturers. Therefore, the goods are similar.

The contested baby monitors; cameras equipped with microphones and speakers for use in transmitting and receiving audio and visual content; navigation apparatus for vehicles; satellite navigation apparatus; road map display apparatus for assisting the navigation of a vehicle; radios; DAB (digital audio broadcasting) radios, Internet radios, digital radios, apparatus for use in audio-visual multimedia streaming devices and audio-visual communications; baby monitors, baby alarms; televisions, DVD players, liquid crystal display; apparatus for recording, transmission, amplifying or reproduction of sound or images show a certain link with the opponent’s goods in class 9 since nowadays such goods often need computer software to operate. In particular, they may rely on wireless connections and remote functions which require control software. This means that a complementary character exists and that the goods under comparison are aimed at the same public. In addition, they are often sold in the same shops to the same public. In the current market it may also be the case that the producers of the opponent’s goods also produce the contested goods. Owing to these factors, it is likely that the public will believe that they come from the same or a linked undertaking. Taking all this into consideration, the Opposition Division concludes that these goods are similar.

The contested DVDs; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media are various data storage devices and media and computer components and parts. These goods are similar to a low degree to the opponent’s software because they can coincide in end user and distribution channels.

Bearing in mind the identity or similarity of the abovementioned goods, it should also be noted that their parts, fittings and accessories are often produced and/or sold by the same undertaking and that they target the same purchasing public. Consequently, the remaining contested parts fittings and accessories for all the aforementioned goods are considered similar.

Contested services in Class 38

All the contested services are telecommunication services which essentially facilitate communication over remote means. Such services are dependent on the opponent’s design and development of computer hardware and software in Class 42 leading to not only a complementary relationship but also the fact that such services often derive from the same provider and are found via the same channels and directed at the same user. These opponent’s services are involved in the process of ensuring a telecommunication connection, either by designing the technical equipment or the necessary program platform or by controlling and directing them. Therefore, the services are similar.

Contested services in Class 42

The contested development of new technology for others in the nature of interoperability standards; development of interoperability standards for remote monitoring services of heating, ventilating and air conditioning apparatus; research and development for new products for others; research in the nature of interoperability standards; development of new technology for others in the fields of consumer electronics and wireless communications; research and development of standards for products and services in the fields of consumer electronics and wireless communications; research in the field of consumer electronics include, amongst others, services such as the opponent’s design and development of computer software and hardware. Therefore, since these services may coincide partially, they are considered identical. In particular, it should be mentioned that research is integral to development of computer software and hardware. It may also be added that ‘Interoperability’ is a property of a product or system, whose interfaces are completely understood, to work with other products or systems, present or future, without any restricted access or implementation. It is something essential in IT field. With respect to software, the term interoperability is used to describe the capability of different programs to exchange data via a common set of exchange formats, to read and write the same file formats, and to use the same protocols.

The contested testing, analysis, and evaluation of wireless communication networks, home area networks, commercial networks, industrial networks, and utility company networks of others for the purposes of certification; remote monitoring services of heating, ventilating, and air conditioning apparatus are similar to the opponent’s design and development of computer hardware and software to the extent that they can coincide in their origin and end-user. Indeed, nowadays it is common for businesses to offer packages that cover all aspects of the demand for all-in, tailor-made IT solutions.

The contested technical consultation in the nature of interoperability standards; technical support services; and technical consultation in the field of consumer electronics are similar to design and development of computer hardware and software protected by the earlier mark. Indeed, designers and developers of computer hardware and software could also give advice on these systems. In the IT field, it is usual that all these services remain within the same companies. The services may well derive from the same undertakings and be provided via the same means to the same consumers. There may also be a certain interdependent relationship making them complementary.

2. The signs

HBBLE	HUBBLE HOME
Earlier trade mark	Contested sign

The relevant territory is Germany.

Visually, the signs are similar to the extent that they coincide in the letters ‘H*BBLE’. In other words, the whole of the earlier sign is included in the contested sign in the same order, thus five of the six letters in the first word of the contested mark are shared. However, the signs differ in the additional second letter ‘U’ and in the second verbal element ‘HOME’ of the contested mark.

Aurally, the pronunciation of the earlier mark’s only verbal element ‘HBBLE’ and of the contested sign’s first element ‘HUBBLE’ will be very similar for the relevant public, since these two terms share all their letters in the same order, with the only exception being the second letter ‘U’ of the contested sign. Also to take into account is that a significant part of the public will, in a natural way, insert a kind of ‘A’ after the ‘H’ in the earlier sign, since the German ‘h’ is pronounced like ‘ha’. In such a case, the differences consist more specifically in the sound of the first syllable’s vowel, namely ‘A’ against ‘U’ or ‘E’ if ‘HUBBLE’ is pronounced in an English manner.

In addition, the pronunciation of the signs differs in the sound of the additional verbal element of the contested sign ‘HOME’.

Conceptually, the word ‘HOME’ of the contested sign is a commonly used English word and will be perceived as ‘the place or a place where one lives’ or ‘a house or other dwelling’ (Collins English Dictionary) by German-speaking consumers.

The term ‘HUBBLE’ of the contested sign will be perceived by a significant part of the public as the well-known space telescope that was launched into low Earth orbit in 1990, and remains in operation. For the other part of the public, this word may be meaningless.

The earlier sign does not convey any meaning. In such a case, the signs are therefore not conceptually similar.

However, it is highly likely that a significant part of the public will also perceive Hubble in the earlier mark ‘HBBLE’, since this telescope is widely known, its spelling is relatively striking in German and the difference consists only in a vowel. In that situation, the signs are conceptually similar insofar as they both refer to the Hubble Telescope.

Taking into account the abovementioned visual, aural and also conceptual coincidences for a part of the public, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive than other elements.

The element ‘HOME’ of the contested sign will be associated with the idea of the place where one lives and also to the particular aim of the goods and services, i.e. for use at home. Bearing in mind that the relevant goods and services are related to IT, telecommunications and consumer goods, it is considered that this element is weak. In this respect, ‘HOME’ refers notably to the fact that the goods and services may be provided in a person's place of dwelling. The relevant public understands the meaning of that element and will not pay as much attention to this weak element as to the other more distinctive elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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 goods and 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.

5. Relevant public – degree of attention

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

In the present case, the goods and services found to be identical and similar to different degrees are targeted at the general public and also at professionals.

The level of attention ranges from average to higher than average for some specialised goods and services.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of

11/11/1997, C 251/95, ‘Sabèl’, paragraph 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C 39/97, ‘Canon’, paragraph 17 et seq.).

The goods and services are partially identical and partially similar to different degrees.

The signs are visually and aurally similar to the extent that the earlier mark and the most distinctive term of the contested sign’s two elements coincide in all the letters in the same order, with the only exception of the second letter ‘U’ of the contested sign.

Moreover, a part of the public will perceive the term ‘HUBBLE’ of the contested sign in the earlier mark. In such a case, the signs also show conceptual similarities.

The signs only differ in the contested sign’s t vowel, ‘U’, and the additional term ‘HOME’, which is endowed with a weak character and the impact of which is limited when assessing the likelihood of confusion between the marks at issue. Furthermore, the aural difference between ‘HBBLE’ and ‘HUBBLE’ due to the vowel ‘U’ may even be insignificant with an English pronunciation of the signs.

It should also be recalled that consumers tend to remember similarities rather than dissimilarities between signs, and that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’).

Finally, the earlier mark as a whole is distinctive to a normal degree.

In light of all the above, the Opposition Division concludes that the strong similarities between the marks are enough to outweigh the differences of only one letter and a weak element, and may cause at least part of the public to believe that the conflicting goods and services come from the same undertaking or economically linked undertakings, despite the possible low degree of similarity and higher level of attention for some goods and services. The marks under comparison convey similar overall impressions and the relevant consumer will have difficulties recalling, recognising and successfully differentiating between the marks in opposition.

Therefore, it is considered that there is a likelihood of confusion on a significant part of the public at least. Accordingly, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 012 001 133. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right German trade mark registration No 302 012 001 133 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Loreto URRACA LUQUE

Steve HAUSER

Vanessa PAGE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.