OPPOSITION No B 3 007 526

Yello Strom GmbH, Siegburger Straße 229 (Torhaus), 50679 Köln, Germany (opponent), represented by Lichtenstein & Körner Rechtsanwälte Partnerschaft mbB, Heidehofstr. 9, 70184 Stuttgart, Germany (professional representative)

a g a i n s t

Michel Hernandez, 14 rue st Hilaire, 31000 Toulouse, France (applicant).

On 31/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 007 526 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 188 616 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 188 616 . The opposition is based on, inter alia, European Union trade mark registration No 16 234 288 . 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 16 234 288 .

a) The goods and services

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

Class 9: Software; Data processing apparatus and computers; Data storage devices, in particular encoded telephone and pre-paid telephone cards.

Class 35: Business assistance, management and administrative services; Arranging and rental of advertising space, including on the internet, other than in connection with telecommunications and business directories, and information services; Marketing, namely advertising for new technologies, in particular in the environmental and energy sector; Arranging of contracts, for others, for the providing of services.

Class 42: Design and development of computer hardware and software.

The contested goods and services are the following:

Class 9: Encoded reward cards; Cash registers; Electronic cash registers; Automatic cash registers; Software for evaluating customer behaviour in online shops.

Class 35: Promotion of goods and services through sponsorship; Loyalty scheme services; Administrative loyalty card services; Administration of loyalty rewards programs; Promoting the goods and services of others by means of a loyalty rewards card scheme; Customer relationship management; Management of customer loyalty, incentive or promotional schemes; Customer club services, for commercial, promotional and/or advertising purposes; Customer loyalty services for commercial, promotional and/or advertising purposes; Sales promotion through customer loyalty programs; Organisational consultancy regarding customer loyalty programmes; Organisation of customer loyalty programs for commercial, promotional or advertising purposes; Administration of customer loyalty and incentive schemes; Promoting the goods and services of others by means of a preferred customer program; Outsource service provider in the field of customer relationship management; Targeted marketing; Marketing; Analysis relating to marketing; Promotional marketing; Market campaigns; Product marketing; Internet marketing; Business marketing services; Consulting services in the field of Internet marketing; Marketing assistance; Preparation of marketing plans; Advice relating to marketing management; Planning of marketing strategies; Marketing consulting; Marketing advice; Administration relating to marketing; Database marketing; Trade marketing [other than selling]; Marketing services in the field of restaurants; Marketing services in the field of travel; Direct marketing consulting; Provision of marketing reports; Providing marketing information via websites; Marketing the goods and services of others by distributing coupons.

Class 42: Software as a service [SaaS]; Programming of software for evaluating customer behaviour in online shops.

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 ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu Tride, EU:T:2003:107).

However, the term ‘namely’, also used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 cash registers; electronic cash registers; automatic cash registers are included in the broad category of the opponent’s data processing apparatus and computers. Therefore, they are identical.

The contested software for evaluating customer behaviour in online shops is included in the broad category of the opponent’s software. Therefore, they are identical.

The contested encoded reward cards are at least similar to the opponent’s data storage devices, in particular encoded telephone and pre-paid telephone cards because they have the same nature and purpose (card to store data) and they coincide in end user, as well as producer.

Contested services in Class 35

The contested outsource service provider in the field of customer relationship management are included in the broad category of the opponent’s arranging of contracts, for others, for the providing of services. Therefore, they are identical.

The contested targeted marketing; marketing; analysis relating to marketing; promotional marketing; market campaigns; product marketing; internet marketing; business marketing services; consulting services in the field of Internet marketing; marketing assistance; preparation of marketing plans; planning of marketing strategies; marketing consulting; marketing advice; administration relating to marketing; database marketing; trade marketing [other than selling]; marketing services in the field of restaurants; marketing services in the field of travel; direct marketing consulting; provision of marketing reports; providing marketing information via websites; marketing the goods and services of others by distributing coupons are at least similar to the opponent’s marketing, namely advertising for new technologies, in particular in the environmental and energy sector because they have the same nature and hence have the same or a close destination (marketing services aiming at developing methods of production, pricing, promotion and distribution for the goods and services subject of the services). Furthermore, they target the same public and they are usually offered by the same undertakings through the same distribution channels.

The contested advice relating to marketing management are similar to the opponent’s marketing, namely advertising for new technologies, in particular in the environmental and energy sector because they coincide in the following criteria: they have the same nature or a close nature (advices related to marketing) and they coincide in distribution channels, end user and provider.

The contested customer relationship management are similar to the opponent’s business assistance, management and administrative services because they have the same purpose or at least their purposes overlap in so far the opponent’s services aim at managing customer’s relationships. They also coincide in end user and usual provider.

The contested promotion of goods and services through sponsorship; loyalty scheme services; administrative loyalty card services; administration of loyalty rewards programs; promoting the goods and services of others by means of a loyalty rewards card scheme; management of customer loyalty, incentive or promotional schemes; customer club services, for commercial, promotional and/or advertising purposes; customer loyalty services for commercial, promotional and/or advertising purposes; sales promotion through customer loyalty programs; organisational consultancy regarding customer loyalty programmes; organisation of customer loyalty programs for commercial, promotional or advertising purposes; administration of customer loyalty and incentive schemes; promoting the goods and services of others by means of a preferred customer program are similar to the opponent’s arranging and rental of advertising space, including on the internet, other than in connection with telecommunications and business directories, and information services. Indeed, their nature coincides in so far both sets of services are promotional services and therefore, their purpose is also the same. Moreover, they coincide in target public, distribution channels and usual provider.

Contested services in Class 42

The contested programming of software for evaluating customer behaviour in online shops is included in the broad category of the opponent’s design and development of computer software. Therefore, they are identical.

The contested software as a service [SaaS] is similar to the opponent’s design and development of computer software because they have the same nature (software related services), they coincide in usual origin (IT companies, IT engineers), distribution channels and end user.

b) 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 at least similar are directed at both professional and non-professional consumers.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

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, the contested sign is composed of words that are meaningful in English. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the word element ‘yello’ written in a standard lower case black typeface underlined by a curve and displayed against a circular yellow background. The contested sign is also figurative, it is composed of the words, ‘yellow’ and ‘shop’, written in a fairly standard lower case dark blue typeface, the word ‘yellow’ being in bold on the top of which a fanciful representation of a bee is depicted.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In the present case, it casts no doubt that the contested sign will be broken down into the elements ‘yellow’ and ‘shop’ both of which are meaningful in English and each of which is written in a different fashion.

The English word ‘yellow’ of the contested mark will be seen as a reference to a colour. This word has no descriptive meaning in relation to the goods and services in question and therefore has a normal degree of distinctiveness (see to this effect, as regards goods in Class 9, 15/09/2015, R 2877/2014-4, ULTRA YELLOW / YELLO, § 21, and, as regards services in Classes 35 and 42, 20/03/2014, R 274/2013-4, YELLOW LOUNGE / YELLO, § 21 to 24).

The word ‘yello’ forming the verbal element of the earlier mark does not exist as such in English. However, as it will be pronounced in almost the same way as the English word ‘yellow’, a part of the relevant public may perceive it as a misspelling of ‘yellow’, which, as already stated, refers to a colour (see, inter alia, 15/09/2015, R 2877/2014-4, ULTRA YELLOW / YELLO § 26; 23/11/2016, B 2 462 094, YELLOW BRAND PROTECTION; 08/03/2016, B 2 509 761, YELLOW auto). As apparent from the above, even for the part of the public that will perceive ‘yello’ as a misspelling of ‘yellow’, this word has no descriptive meaning in relation to the goods and services in question and has, therefore, a normal degree of distinctiveness.

As rightly argued by the opponent, in contrast with the elements ‘yello’ and ‘yellow’, the verbal element ‘shop’ of the contested sign will be associated with a commercial establishment in which goods are sold and is, therefore, descriptive in nature (see to that effect, 06/12/2016, T-735/15, EU:T:2016:704, SHOP ART, § 43). The same holds true in the context of services which can address or relate to shops or even be hired in shops.

As to the graphical features of the signs, it has to be noted that circular frames are commonly used in trade in order to highlight the information herein contained so that consumers do not usually give them any trade mark significance (see, 15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27, by analogy). Therefore, the circular background of the earlier mark lacks any distinctive character. The same holds true about the curve underlining the word ‘yello’ of the earlier mark as well as for the typeface in which the word ‘yello’ is written because it is a fairly standard typeface that is not likely to be given any trade mark significance.

The typeface in which the contested sign’s verbal elements are written is also fairly standard and therefore, it also lacks distinctiveness. However, the representation of a bee in the contested sign is quite fanciful and the concept itself has no relation whatsoever with the goods and services in question in the present case. Therefore, it is distinctive.

It follows from the above that the element ‘yello’ is the only distinctive element of the earlier mark and ‘yellow’ the only distinctive word element of the contested sign.

The signs have no element that could be considered clearly more dominant than other elements.

It is in the light of these considerations that the signs have to be compared.

Visually, the signs coincide in the sequence of letters ‘yello*’. They differ in the additional letter ‘w’ of the word ‘yellow’ in the contested sign, as well as in the additional word ‘shop’ of the contested sign, which is non-distinctive. The signs further differ in so far their graphical aspects are concerned, none of which has any counterpart in the other sign.

As to the graphical differences it is noted that 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 (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37).

Moreover, the word element of the earlier mark ‘yello’ is included in the beginning of the contested sign ‘yellow’ and the additional differing word element ‘shop’ of the contested sign is not distinctive. Therefore, bearing in mind all the above said and also the fact that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, the signs have to be considered similar to an average degree.

Aurally, although the last letter ‘w’ of ‘yellow’ will be pronounced, and, hence, represents an aural difference between the signs, this difference is slight.

The marks differ in the sound of the additional element of the contested sign ‘shop’. However, that element is not distinctive and therefore, it cannot constitute a significant aural difference.

It follows from the above that the signs are aurally highly similar.

Conceptually, as explained above, the earlier mark ‘yello’ and the contested sign’s element ‘yellow’ convey, at least for a part of the public, the same meaning, namely the colour between green and orange in the spectrum of visible light. On the other hand, although the English-speaking public in the relevant territory will attribute a meaning to the element ‘shop’ of the contested sign, it is not distinctive for the relevant goods and services, and therefore, it does not have much influence from the conceptual point of view. Finally, the concept of a ‘bee’ evoked by the figurative element of the contested sign does not eliminate, but reduces the similarity between the signs on a conceptual level. All in all, the signs are thus conceptually similar to an average degree on account of the coincidence in the concept of the colour between green and orange in the spectrum of visible light.

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

d) 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 some non‑distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That assessment implies some interdependence between the relevant factors, and in particular a similarity between the signs and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the signs, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18, 19).

The goods and services are identical or at least similar. The degree of attention displayed by the relevant public at the time of purchase will vary between average and high.

The inherent distinctive character of the earlier trade mark is normal. The signs are similar to an average degree from the visual and conceptual perspectives and they are aurally similar to a high degree for the English-speaking public.

Having regard to the above, the Opposition Division considers that there is a likelihood of confusion between the signs.

The earlier mark’s sole verbal element ‘yello’ which is also its only distinctive element being entirely included in the first and only distinctive word element of the contested sign, the contested sign could be perceived as a sub-brand or a variation of the earlier mark despite the differences they display, including the graphical differences.

Considering the above, there is a likelihood of confusion on the part of the English‑speaking part of the public, even if the degree of attention of the relevant public will be high for some of the goods and services in question. 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 registration No 16 234 288 . It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier trade mark No 16 234 288 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 (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

Rasa BARAKAUSKIENE

Marine DARTEYRE

Claudia ATTINÁ

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.