OPPOSITION No B 2 500 059

bluefax UG, Adi-Maislinger-Str. 7, 81373 Munich, Germany (opponent), represented by Finck Althaus Sigl & Partner, Nußbaumstr. 12, 80336 Munich, Germany (professional representative)

a g a i n s t

Blue Tel (Europe) Limited, Lakeside House 1 Furzeground Way Stockley Park, Heathrow UB11 1BD, United Kingdom (applicant), represented by JP Mitchell Solicitors, 1 Barlow Road, Hampton, Middlesex TW12 2NF, United Kingdom (professional representative).

On 30/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 500 059 is upheld for all the contested goods and services, namely

Class 9: Telecommunications apparatus, equipment and devices; mobile telecommunications apparatus, equipment and devices; information technology and audio-visual equipment, apparatus and devices; communication equipment and apparatus; mobile telephones; accessories and equipment for use with mobile telephones; mobile phone cases, carriers, stands, screen protectors, chargers, cables, headsets, headphones, holders, straps, keyboards and hands-free devices.

Class 38: Telecommunications; telecommunications services; mobile telecommunications services; advisory services relating to telecommunications; provision of information relating to telecommunications; hire, leasing and rental of telecommunications equipment, apparatus and devices; telephone and mobile telephone services; provision of telecommunications equipment, apparatus and devices.

2. Community trade mark application No 13 460 605 is rejected for all the contested goods and services. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 13 460 605, namely against all the goods and services in Classes 9 and 38. The opposition is based on Community trade mark registration No 10 325 355. 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.

1. The goods and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Data-processing equipment and computers; Telephone transmitters; Computer or telephone network connectors; Telephones; Computerised telephony systems; Automatic telephone diallers; Automatic telephone exchange apparatus.

Class 38: Telecommunications; Fax services; Computer telephony; Internet telephony services; Communication services by means of telephone; Wireless mobile phone services; Telephone services; Telecommunications by computer terminals, via telematics, satellites, radios, telegraphs, telephones; Transfer of telephone or telecommunications calls; Transmission of data through the use of electronic image processing by telephone link.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

The contested goods and services are the following:

Class 9: Telecommunications apparatus, equipment and devices; mobile telecommunications apparatus, equipment and devices; information technology and audio-visual equipment, apparatus and devices; communication equipment and apparatus; mobile telephones; accessories and equipment for use with mobile telephones; mobile phone cases, carriers, stands, screen protectors, chargers, cables, headsets, headphones, holders, straps, keyboards and hands-free devices.

Class 38: Telecommunications; telecommunications services; mobile telecommunications services; advisory services relating to telecommunications; provision of information relating to telecommunications; hire, leasing and rental of telecommunications equipment, apparatus and devices; telephone and mobile telephone services; provision of telecommunications equipment, apparatus and devices.

Contested goods in Class 9

The contested telecommunications apparatus, equipment and devices; mobile telecommunications apparatus, equipment and devices; information technology and audio-visual equipment, apparatus and devices; communication equipment and apparatus; headsets, headphones, hands-free devices are identical to the opponent’s apparatus for recording, transmission or reproduction of sound or images, either because the contested goods are included in or overlap with the opponent’s goods.

The contested mobile telephones are included in the broad category of the opponent’s telephones. Therefore, they are considered identical.

The contested cables overlap with the opponent’s computer or telephone network connectors. Therefore, they are considered identical.

The contested accessories and equipment for use with mobile telephones; mobile phone cases are similar to the opponent’s telephones, since they can coincide in producers, end users and distribution channels. Furthermore they can be complementary.

The contested carriers, stands, screen protectors, chargers, holders, straps can also be regarded as accessories for telephones and they are similar to the opponent’s telephones. They can be used in combination with each other. They can be sold in the same shops and target the same consumers. Furthermore, these goods are normally manufactured by the same kinds of undertakings.

The contested keyboards are similar to the opponent´s computers since they are complementary and they can be produced by the same producers. They can coincide in their end users and distribution channels.

Contested goods in Class 38

The contested telecommunications; telecommunications services; telephone services are identically contained in both lists of services (including synonyms).

The contested mobile telephone services are included in the broad category of the opponent’s telephone services. Therefore, they are considered identical.

The contested mobile telecommunications services; advisory services relating to telecommunications; provision of information relating to telecommunications; hire, leasing and rental of telecommunications equipment, apparatus and devices; provision of telecommunications equipment, apparatus and devices are included in the broad category of the opponent’s telecommunications. Therefore, they are considered identical.

2. The signs

blueFAX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is a word mark composed of the word ‘blueFAX’. The contested sign is a figurative mark consisting of the word element ‘BLUETEL’ written in bold black capital letters surrounded by two blue arcs.

Visually, the signs are similar to the extent that they coincide in the word ‘BLUE’. However, they differ in the elements ‘FAX’ of the earlier mark and ‘TEL’ of the contested sign. They also differ in the figurative elements and in the bold typeface of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛BLUE’ present in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the element ‛FAX’ of the earlier mark and ‘TEL’ of the contested sign.

Conceptually, although consumers normally perceive a mark as a whole and do not proceed to analyse its various details, it is reasonable to assume that the relevant consumers will perceive the conjoined verbal element of the earlier mark, ‘blueFAX’, as the mere sum of its parts, thus splitting it into the words ‘blue’ and ‘FAX’. This is also because of the use of capital letters in the element ‘FAX’. The public will also split the contested sign into ‘BLUE’ and ‘TEL’, since both elements are known to them.

The word ‘BLUE’, included in both signs, is likely to be understood as the name of the colour blue by the public in the relevant territory, since it belongs to the basic English vocabulary and has similar equivalent words in many of the relevant languages (e.g. “blau” in German, “bleu” in French, “blu” in Italian, “blauw” in Dutch).

The element ‘FAX’ of the earlier mark will be perceived by the public in the relevant territory as meaning ‘an exact copy of a document made by electronic scanning and transmitted as data by telecommunications links; a machine for transmitting and receiving faxes’ (information extracted from Oxford Dictionaries on 30/11/2015 at http://www.oxforddictionaries.com/definition/english/fax)

The element ‘TEL’ of the contested sign will be perceived as a commonly used abbreviation for ‘telephone’ by the public in the relevant territory.

The figurative elements of the contested sign have no clear concept.

Consequently, the marks are conceptually similar to the extent that they coincide in the word ‘BLUE’ and differ in the rest of the elements.

Taking into account the abovementioned visual, aural, and conceptual coincidences, 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 element ‘FAX’ of the earlier mark will be perceived as meaning ‘an exact copy of a document made by electronic scanning and transmitted as data by telecommunications links; a machine for transmitting and receiving faxes’. Bearing in mind that the relevant goods and services are related to telephones or telecommunication, it is considered that this element is non‑distinctive for these goods and services. The public understands the meaning of the element and will not pay as much attention to this non‑distinctive element as to the other more distinctive elements of the mark. Consequently, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘TEL’ of the contested sign will be associated with telephone. Bearing in mind that the relevant goods and services are related to telephones or telecommunication, it is considered that this element is non‑distinctive or at least weak for these goods and services. The public understands the meaning of the element and will not pay as much attention to this element as to the other more distinctive elements of the mark. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.

In addition, the figurative elements of the contested sign are of a purely decorative nature. It is for this reason that the element ‘BLUE’ of the contested sign is considered more distinctive than the figurative elements. Consequently, the additional figurative elements have only a limited impact when assessing the likelihood of confusion between the marks.

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, despite the presence of a non‑distinctive element in the mark as stated above in section c) of this decision.

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 or similar are directed at both the public at large and business customers with specific professional knowledge or expertise. Depending on the particular goods and services, the level of attention will vary from average to higher than average.

6. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar.

The signs are visually, aurally and conceptually similar to the extent that they coincide in the word ‘BLUE’. They differ in the word ‘FAX’ of the earlier mark and ‘TEL’ of the contested sign. They also differ in the figurative elements and in the bold typeface of the contested sign.

The differences between the signs are confined to non-distinctive or weak elements. Therefore, the relevant public will pay less attention to these elements and more attention to the coinciding element, ‘BLUE’, which constitutes the distinctive part of the signs in conflict.

When a sign consists of both verbal and figurative components, the verbal components of the sign usually have a stronger impact on the consumer than the figurative components. This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component.

Furthermore, consumers are generally thought to focus on the first element of a sign when being confronted with a trade mark. Consequently, the identical beginnings of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Taking into account all the relevant circumstances of the case, in particular the identity or similarity between the goods and services and the overall similarity of the signs, causing by the common distinctive verbal element ‘BLUE’, the Opposition Division considers that the similarities between the marks are sufficient to trigger a likelihood of confusion, and the relevant public might think that the identical or similar goods and services in question come from the same undertaking or economically linked undertakings, even though the degree of attention is likely to be higher than average for some conflicting goods and services.

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 Community trade mark registration No 10 325 355. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Rhys MORGAN

Hasan Oguzhan KARSLI

Eamonn KELLY

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.