OPPOSITION No B 2 912 122

O2 Worldwide Limited, 20 Air Street, W1B 5AN London, United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, CB24 9ZR Cambridge, United Kingdom (professional representative)

a g a i n s t

Road Group, 252-254 rue de Rosny, 93100 Montreuil, France (applicant).

On 29/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 912 122 is upheld for all the contested services.

2. European Union trade mark application No 16 455 008 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 455 008 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registrations No 15 301 005 and No 9 279 456, both for the word mark ‘O2’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 registrations No 15 301 005 and No 9 279 456, both for the word mark ‘O2’, since they are more similar to the contested sign and cover all the relevant services.

1. The services

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

European Union trade mark registration No 15 301 005

Class 37: Building construction; installation, maintenance and repair of telecommunications installations, communications networks, computer networks and data networks; installation, maintenance and repair of telecommunications apparatus and equipment; installation, maintenance and repair of computer hardware; electric appliance installation and repair; machinery installation, maintenance and repair; photographic apparatus repair; telephone installation and repair; air conditioning apparatus installation and repair; airplane maintenance and repair; bricklaying; building construction supervision; building insulating; building sealing; burglar alarm installation and repair; carpentry services; chimney sweeping; cleaning of buildings [exterior surface]; cleaning of buildings [interior]; cleaning of clothing; clothing repair; clock and watch repair; construction; disinfecting; dry cleaning; furniture maintenance; heating equipment installation and repair; kitchen equipment installation; laundering; linen ironing; machinery installation, maintenance and repair; masonry; motor vehicle maintenance and repair; office machines and equipment installation, maintenance and repair; painting, interior and exterior; plumbing; pump repair; rebuilding engines that have been worn or partially destroyed; rebuilding machines that have been worn or partially destroyed; renovation of clothing; rental of cleaning machines; rental of construction equipment; repair information; restoration of works of art; safe maintenance and repair; shoe repair; street cleaning; telephone installation and repair; underwater construction; upholstering; varnishing; vehicle battery charging; vehicle breakdown repair services; vehicle cleaning; vehicle maintenance; vehicle service stations [refuelling and maintenance]; washing; window cleaning; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network.

European Union trade mark registration No 9 279 456

Class 35: Advertising; business management; business administration; office functions; […]; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network.

Class 39: Transport; packaging and storage of goods; travel arrangement; provision of information relating to travel, transport, traffic, traffic flows and congestion; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

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; IT services; computer programming services; services of a programmer; recovery of computer data; consultancy in the field of computer hardware; computer programming; duplication of computer programs; computer rental; computer software design; installation of computer software; maintenance of computer software; updating of computer software; rental of computer software; rental of computer hardware; computer system design; computer systems analysis; consultancy in the field of computer software; conversion of data or documents from physical to electronic media; creating and maintaining websites for others; data conversion of computer programs and data (not physical conversion); hosting computer sites (web sites); services of engineers; expert advice and expert opinion relating to technology; rental of data processing apparatus and computers; technical services relating to projection and planning of equipment for telecommunications; services of information brokers and providers, namely product research for others; weather forecasting; research in the field of telecommunication technology; monitoring of network systems in the field of telecommunications; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; technical support services relating to telecommunications and apparatus; information and advisory services in relation to the aforesaid services provided over a telecommunications network; Authenticating works of art; cloud seeding; computer hardware (consultancy in the field of-); computer rental; conversion of data or documents from physical to electronic media; design services (packaging-); designing (dress-); dress designing; graphic arts designing; packaging design; rental of computer software; rental of web servers.

The contested services are the following:

Class 35: Class 35: Telephone marketing services [not selling].

Class 37: Class 37: Automobile cleaning and car washing.

Class 39: Class 39: Transport.

Class 42: Class 42: Software as a service [SaaS].

Contested services in Class 35

The contested telephone marketing services [not selling] are included in the broad category of the opponent’s advertising. Therefore, they are identical.

Contested services in Class 37

The contested automobile cleaning and car washing are included in the broad category of the opponent’s vehicle cleaning, since automobiles and cars are types of vehicles, and washing consist of cleaning in water or other liquid vehicle cleaning. Therefore, they are identical.

Contested services in Class 39

Transport is identically contained in both lists of services.

Contested services in Class 42

The contested software as a service [SaaS] is a form of cloud computing in which software is hosted on a central server and end users access it remotely. These services are included in the broad category of the opponent’s IT services IT services. Therefore, they are identical.

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 partly directed at business customers with specific professional knowledge or expertise (e.g., telephone marketing services [not selling] in Class 35 or software as a service [SaaS] in Class 42) and partly at both, the public at large and business customers (e.g., transport in Class 39).

The degree of attention may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased. It will be high, for example, in relation to telephone marketing services [not selling] in Class 35 or software as a service [SaaS] in Class 42, since they may have important consequences in the running of a business.

3. The signs

O2
Earlier trade marks	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.

The word element ‘CAB’ of the contested sign constitutes a differing element between the marks (see comparison below). Given that it has a meaning for English speakers, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public since, for these consumers, it will have a reduced impact, at least in relation to part of the services involved, as it will be explained below. It is, therefore, considered that focusing the comparison of signs on this part of the public constitutes the best-case scenario for likelihood of confusion to occur.

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there is an element that is barely perceptible, namely the element ‘.com’, written in light grey colour and at the bottom right part of the sign. As this is likely to be disregarded by the relevant public, it will not be further taken into consideration.

The earlier marks refer to the concept of a chemical formula, namely, oxygen in its most stable form. The fact that ‘O2’ is not represented on a split-level is not relevant since the chemical formula is frequently referred to in both ways and this is aurally clear. This chemical formula is commonly known and, as such, the relevant public will be aware of this concept. It is distinctive in relation to the relevant services.

As to the contested sign, even if the element ‘O2’ is joined to the element ‘CAB’, this does not alter the fact that the public will most probably perceive the same concept of the chemical formula as this is also aurally and visually clear (due to the different typeface and colours). Indeed the contested sign will be read as ‘O2 CAB’ and indeed, as mentioned previously, ‘O2’ has a clear meaning which will be readily grasped by the relevant public and is, moreover, distinctive in relation to the relevant services. The element ‘CAB’ of the contested sign will be associated with ‘a taxi’ (information extracted from Oxford Living Dictionaries on 27/06/2018 at www.oxforddictionaries.com). Bearing this in mind, this element is non-distinctive for transport services in Class 39, since it refers to a specific means of transport. It is normally distinctive for the remaining services.

Furthermore, the contested sign contains a figurative element of a purely decorative nature with a low distinctive character, namely a light blue line under the numeral ‘2’.

The contested sign has no element that could be considered clearly more dominant than other elements.

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). Moreover, in the present case, regarding the fairly standard typeface and colours in which the contested mark is represented, this stylisation must be considered as not that elaborated or sophisticated that it will deflect consumers’ attention away from the verbal elements they embellish.

In addition, 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. Therefore, the element ‘O2’ of the contested sign, that will be aurally and visually perceived, will produce a greater impact on the consumer.

Visually and aurally, the signs coincide in the element ‘O2’, portrayed as the initial part of the contested sign and its most distinctive element as regards part of the relevant services. The signs differ in the additional element ‘CAB’, which has no counterpart in the earlier marks but, as explained before, is of low significance for part of the services involved and, in any event, is in the latter half of the mark. Further, the marks also differ visually in the figurative representation which is of a lesser impact in this mark, including its fairly standard typeface, nuances of blue colour and purely decorative element.

Therefore, bearing in mind the previous assertions regarding the distinctiveness of the elements in the signs, and highlighting the fact that the whole of the earlier mark is included as the first element in the contested sign, at least an average degree of visual and aural similarity can be sustained.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the chemical formula of oxygen, of average distinctiveness, and the additional concept conveyed by the contested sign is non-distinctive for part of the relevant services, at least an average degree of conceptual similarity can be sustained.

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 marks

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

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested services are identical to services on which the opposition is based. They are directed at the public at large and at professional customers with specific knowledge or expertise and a degree of attention that will vary from average to high, whereas the inherent distinctiveness of the earlier marks is normal.

It has also been concluded that, on the basis of the English speaking part of the public, the signs are visually, aurally and conceptually similar at least to an average degree, the earlier marks ‘O2’ being fully reproduced in the contested sign as its first independent element. The additional elements of the contested mark described in the comparison of the signs are confined to the figurative representation with less impact, as outlined previously, and to the additional element ‘CAB’, which is non-distinctive for part of the services involved.

Furthermore, account should be 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 with 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).

It should also be borne in mind that 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 and services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of services which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical services. Therefore, the relevant public, despite paying a higher than average degree of attention in connection with part of the services, may believe that these services come from the same undertaking or, at least, economically-linked undertakings, particularly in the belief that the contested mark is a mere sub-brand of the earlier signs.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 15 301 005 and No 9 279 456. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier rights No 15 301 005 and No 9 279 456, on the basis of the ground of Article 8(1)(b) EUTMR and of their inherent distinctiveness, lead to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to further examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268), the other ground of the opposition, namely Article 8(5) EUTMR, or the enhanced degree of distinctiveness due to the reputation of the opposing marks and the eventual existence of a family of marks as claimed by the opponent.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Vanessa PAGE

Eva Inés PEREZ SANTONJA

Carlos MATEO PÉREZ

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.