OPPOSITION No B 2 537 481

Telefónica, S.A., Gran Vía, 28, 28013 Madrid, Spain (opponent), represented by Intecser Consultoría, Calle Goya, 127, 28009 Madrid, Spain (professional representative)

a g a i n s t

SEQR Group AB, C/O Seamless, P.O. Box 6234, 102 34 Stockholm, Sweden (applicant), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative).

On 03/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 537 481 is partially upheld, namely for the following contested services:

Class 35: Marketing; Promotional marketing; Direct marketing; Advertising and marketing; Marketing by telephone; Publicity and sales promotion services; Advertising, marketing and promotional services; Promoting the sale of the services [on behalf of others] by arranging advertisements; Promoting the goods and services of others; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Online advertisements; Promotion, advertising and marketing of on-line websites; On-line advertising on a computer network; Advertisement via mobile phone networks; Advertising.

Class 38: Telecommunications access services; Provision of access to web pages; Providing access to databases; Providing access to telecommunication networks; Access to content, websites and portals.

2. European Union trade mark application No 13 959 614 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 959 614. The opposition is based on, inter alia, European Union trade mark registration No 9 600 611. 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 European Union trade mark registration No 9 600 611.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission and reproduction of sound or images; Magnetic data carriers, recording and optical discs; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data-processing equipment and computers, recorded computer programmes, screens (computer and television), keyboards (computers), computer mice, CD-ROMs, telephone apparatus, image and sound transmitters and receivers, telephone exchanges; Telephones; Telephone repeaters; Answerphones; Fire-extinguishing apparatus; Electronic publications (electronically-downloadable); Electronic diaries; Intercommunication apparatus; Interfaces (for computers); Game programs; Electronic pens (visual display units); Readers (data processing equipment); Computer peripheral equipment; Magnetic cards; Television apparatus; Coin-operated mechanisms for television sets; Modems.

Class 35: Business management, business administration, marketing studies, export, professional business consultancy, telephone answering for unavailable subscribers, transcription, statistical information for the aforesaid services, business and commercial information, business surveying, opinion polling, advertising; Wholesaling and/or retailing in shops and via global computer networks of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording and optical discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, recorded computer programs, computer and television screens, computer keyboards, computer mice, CD-ROMs, telephone apparatus, transmitters and receivers of sound and images, telephone exchanges, telephones, telephone repeaters, telephone answering machines, fire-extinguishing apparatus, downloadable electronic publications, electronic agendas, intercommunication apparatus, interfaces for computers, games programs, electronic pencils (visual display units), readers (data processing equipment), computer peripheral devices, magnetic encoded cards, television apparatus, coin-operated mechanisms for television sets, modems; Sales promotion (for others).

Class 38: Telecommunications, communications by computer terminals, communications by computer networks; Telephone services; Providing access to a global computer network; Rental of telecommunications apparatus; Rental of message sending apparatus; Rental of modems; Rental of telephones; Electronic advertising (telecommunications); Communications by optical fibre networks; Telephone communications; Connection by telecommunications to a world-wide computer network; Routing and link-up for telecommunications; Information about telecommunications; Electronic mail; Cellular telephone communication; Satellite transmission; Teleconferencing services; Broadcasting of television programmes; Cable television broadcasting; Computer-aided transmission of messages and images; Electronic mail; Providing Internet chatrooms.

Class 41: Educational and entertainment services; Arranging sports and cultural activities; Exhibitions (organization of -) for cultural or educational purposes; Publication of texts (other than publicity texts); Use of on-line electronic publications (not downloadable by data transmission); On-line publication of electronic books and journals (not downloadable); Publication of books; Television and telephone entertainment; Editing and production services of radio and television programmes.

The contested services are the following:

Class 35: Marketing; Promotional marketing; Direct marketing; Advertising and marketing; Marketing by telephone; Publicity and sales promotion services; Advertising, marketing and promotional services; Promoting the sale of the services [on behalf of others] by arranging advertisements; Promoting the goods and services of others; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Online advertisements; Promotion, advertising and marketing of on-line websites; On-line advertising on a computer network; Advertisement via mobile phone networks; Advertising.

Class 36: Payment administration services; Payment processing; Automated payment services; Electronic payment services; Financial payment services; Financial transfers and transactions, and payment services; Finance services; Financial transaction services; Computerised financial information services; Conducting of financial transactions; Automatic recording services for financial transactions; Execution of financial transactions (Services for the -); Money transmission services; Electronic funds transfer; Arranging monetary transfers; Handling of standing orders.

Class 38: Telecommunications access services; Provision of access to web pages; Providing access to databases; Providing access to telecommunication networks; Access to content, websites and portals.

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 35

The contested services are all kinds of advertising, marketing and promotional services. As such, they are identical to the earlier advertising, either because they are identically worded or because they fall under the earlier broader term.

Contested services in Class 38

The contested services fall under the earlier broader term telecommunications and are therefore identical.

Contested services in Class 36

The contested services are financial and payment processing services which will be provided by specialised companies in the world of finance. The earlier services in Class 35 are related to the running and administration of businesses, including advice and consultancy, advertising and marketing and specific wholesale and retail services. The services in Class 38 are all related to telecommunications. The services in Class 41 are educational, entertainment, sports and cultural activities. The contested services are not related to the earlier ones. They will be provided by different companies, they are not complementary and they are not in competition with one another. Their purpose is fundamentally different too. The contested services are therefore dissimilar to the earlier ones.

The earlier goods in Class 9 do not bear any points of contact with the contested services in Class 36 either. As a starting point, there are numerous differences between goods and services. By their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist in the provision of intangible activities. Fundamentally, the opponent’s goods have a different purpose to the applicant’s services. There is no complementary relationship between them either. Therefore, the contested services are dissimilar to the earlier goods.

2. 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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high considering that some of the services, such as advertising or telecommunications, are very specific in nature and aimed at other businesses, for example. Furthermore, some of the services will be fairly expensive.

3. The signs

OnTheSpot
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).

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. In the present case, in view of the conceptual comparison below, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the relevant public, such as the Spanish speaking part.

The earlier mark is a word mark consisting of the words ‘On The Spot’ joined together without spaces. In the case of word marks it is the word as such which is protected. Therefore the fact that the earlier mark combines lower and upper case characters is immaterial.

The contested sign is a figurative mark consisting of the words ‘SHOP ON THE SPOT’ written in white capital letters against a black rectangular background. The word ‘SHOP’ is written in larger letters and placed above the words ‘ON THE SPOT’. Above the word ‘SHOP’, there is a tear-drop shaped device element, which appears as cut out of the top of the black rectangle, with a symbol inside that could be read as a letter ‘S’. There are some letters below but they are so small that they are illegible and will not be taken into account in the comparison of signs.

The earlier mark has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Although the word ‘SHOP’ in the contested sign may be understood as referring to a place where you buy things, since it is a fairly basic English word, it is nevertheless distinctive in connection with the services for Spanish speakers. The words ‘ON THE SPOT’ will not be understood and are distinctive. Furthermore, as regards the contested sign, it is composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal elements are more distinctive than the figurative elements.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the words ‘ON THE SPOT’, although they are written without a space in the earlier mark. They differ in the word ‘SHOP’ in the contested sign and the figurative elements of the contested sign although these elements are less distinctive than the words. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ON THE SPOT’, present identically in both signs. The pronunciation differs in the sound of the letters ‘SHOP’ of the contested mark. The Opposition Division considers it unlikely that the stylised letter ‘S’ in the contested sign will be pronounced since consumers will naturally refer to the mark using its words.

Therefore, the signs are similar to an average degree.

Conceptually, while a part of the public in the relevant territory will perceive the word ‘SHOP’ in the contested mark as referring to a place where you buy things, the other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Where no concept at all is picked up in the contested sign, no conceptual comparison is possible.

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

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 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. Global assessment, other arguments and conclusion

The marks have been found visually and aurally similar to an average degree and the goods and services are identical and dissimilar.

The earlier mark has no meaning for the public in the relevant territory, in this case the Spanish-speaking public, meaning that it is a perfectly distinctive expression. It is true that the contested sign is a figurative mark which displays certain differences to the earlier mark: the extra word ‘SHOP’ which is slightly larger than the words ‘ON THE SPOT’ below, the figurative layout of the mark, the stylised letter ‘S’ and the device element. Nevertheless, the earlier mark is entirely contained in the contested sign. The fact that the earlier mark is written as ‘OnTheSpot’, with no spaces, does not mean that the words will not be clearly perceived and linked with the same words in the contested sign. Furthermore, even if it is likely that the extra word ‘SHOP’ in the contested sign will be seen and pronounced, this does not prevent a link between the marks from occurring in the mind of the consumer.

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. In the case at hand, the Opposition Division holds the view that the relevant public will link the marks, believing that the contested sign is a version of the earlier mark, perhaps representing a different product within the opponent’s family of goods and services.

The Opposition Division finds that the similarity between the signs, resulting from the earlier mark being entirely incorporated in the contested mark, combined with the identity of the services at issue, is such that the contested sign may create an association with the earlier mark in the minds of the relevant public. As a result, the contested mark might be perceived as a variant of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 9 729 948 for the figurative mark for goods and services in Classes 9, 35, 38 and 41.

• Spanish trade mark registration No 2 960 568 for the figurative mark for goods and services in Classes 9, 35, 38 and 41.

• European Union trade mark registration No 2 496 818 for the word mark ‘Hot Spot’ for services in Classes 38 and 42.

Since the first two marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The third earlier right invoked by the opponent is less similar to the contested mark. This is because it contains the word ‘Hot’ which is not present in the contested trade mark and it does not include the words ‘On The’ which are in the contested sign. Moreover, it covers services in Class 38 which have already been compared above and services in Class 42 which are clearly different to those applied for in the contested trade mark. The Class 42 services cover scientific and industrial research and computer services, legal assistance, and construction drafting. These services have nothing in common with the contested services as detailed above. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Lucinda Jane CARNEY

Vanessa PAGE

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.