OPPOSITION No B 3 007 906

Telefónica Germany GmbH & Co. OHG, Georg-Brauchle-Ring 50, 80992 München, Germany (opponent), represented by Müller Fottner Steinecke Rechtsanwalts- und Patentanwaltspartnerschaft MBB, Prielmayerstr. 3, 80335 München, Germany (professional representative)

a g a i n s t

OnDemand Group UK Limited, 2 Exchange Quay, Salfford M5 3EB, United Kingdom (applicant), represented by Paul Price, Suite 114, North Mersey Business Centre, Woodward Road, Kirkby/ Knowsley L33 7UY, United Kingdom (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 007 906 is upheld for all the contested services.

2. European Union trade mark application No 17 214 412 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 214 412 for the word mark ‘LOOPEL’. The opposition is based on European Union trade mark registration No 13 371 463 for the figurative mark and German trade mark registration No 30 069 384 for the word mark ‘LOOP’. 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.

1. The services

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

EUTM No 13 371 463

Class 38: Telecommunications.

German trade mark registration No 30 069 384

Class 35: Business management; office functions.

The contested services are the following:

Class 35: Advising commercial enterprises in the conduct of their business; business advisory services, consultancy and information; information services relating to business matters; operation of a telephone switchboard for others; providing business information, also via internet, the cable network or other forms of data transfer; provision of information relating to business; database management.

Class 38: Arranging access to databases on the internet; providing telephone conferencing services; transfer of telephone or telecommunications calls; provision of telecommunication facilities for educational purposes; provision of communications by telephone; on-line communication services; local and long distance telephone services; electronic transmission of voices (services for the -); communication services by means of telephone; audio communications services; audio teleconferencing.

Contested services in Class 35

The contested advising commercial enterprises in the conduct of their business, business advisory services, consultancy and information; information services relating to business matters; providing business information, also via internet, the cable network or other forms of data transfer; provision of information relating to business are all specific examples of business management services and necessarily fall within the broad category of the earlier business management covered by the earlier German trade mark registration No 30 069 384. Therefore, they are identical.

The contested operation of a telephone switchboard for others and database management are included in the broad category of the earlier office functions covered by the earlier German trade mark registration No 30 069 384. Therefore, they are identical.

Contested services in Class 38

The contested arranging access to databases on the internet; providing telephone conferencing services; transfer of telephone or telecommunications calls; provision of telecommunication facilities for educational purposes; provision of communications by telephone; on-line communication services; local and long distance telephone services; electronic transmission of voices (Services for the -); communication services by means of telephone; audio communications services; audio teleconferencing are all included in the broad category of the earlier telecommunications of the earlier EUTM No 13 371 463. 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 directed at the public at large and at business customers with specific professional knowledge or expertise. Although there are services applied for by the applicant, that will be purchased by the public at large, such as providing business information or on-line communication services, other services such as operation of a telephone switchboard for others or audio teleconferencing services will be purchased by professionals in the field or by business people.

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

3. The signs

1. EUTM No 13 371 463

German trade mark No 30 069 384 LOOP	LOOPEL
Earlier rights	Contested sign

The relevant territory is the European Union, as regards the earlier EUTM and Germany, as regards the earlier German trade mark registration.

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 earlier marks consist of the element ‘LOOP’, one of them with a blue background, and the contested sign consists of the word ‘LOOPEL’.

The word ‘LOOP’ in the earlier marks is a non-basic English word and will not be seen as meaningful in certain territories, for example in those countries where English is not the official language, and therefore not widely spoken and understood, such as Germany. Considering also that the opposition is based on a EUTM and on a German trade mark, for the purpose of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the public in Germany, in order to make the analysis, comparison and reasoning below applicable to both earlier rights.

Based on the above, the element ‘LOOP’ in the earlier rights has no meaning in relation to the services, and thus is considered to have a normal degree of distinctiveness.

Earlier mark nº 1 has a blue background, which has an exclusively ornamental role, and is void of distinctive character. This earlier mark has no element that could be considered clearly more dominant than other elements.

The contested sign is composed of the verbal element ‘LOOPEL’. The mark has no meaning in relation to the relevant services and is therefore of normal distinctive character.

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. In the present case, the entire word element of the earlier marks ‘LOOP’ is included in the contested sign, in which it constitutes the first four letters. This coinciding part will be read first by the potential consumers when they perceive the contested sign.

Visually, the signs coincide in the sequence of letters ‘L-O-O-P’, which is the sole verbal element of the earlier rights and is the beginning of the contested sign. They differ in the two additional letters ‘EL’ at the end of the contested sign and the light blue rectangular background of earlier mark nº 1. However, considering the lack of distinctive character of the blue background, it will not distract the consumer’s attention from the verbal element. Furthermore, considering that the differing part of the contested sign is placed at the end, it has a secondary impact.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the sequence of letters ‘L-O-O-P’ which is the only element to be pronounced in the earlier marks and the first part to be pronounced in the contested sign. The pronunciation differs in the last two letters of the contested sign ‘EL’, which have no counterpart in the earlier marks.

Therefore, the signs are aurally similar to a higher than average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 marks are particularly distinctive by virtue of intensive use or reputation.

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 as a whole 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, despite the presence of a non-distinctive background in the earlier mark nº 1, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The services compared have found to be all identical. They are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high.

The signs are visually and aurally similar to at least a higher than average degree, on account of the coinciding part ‘LOOP’. The signs differ in the two last letters of the contested sign and in the blue background of earlier right nº 1. However, the Opposition Division is of the opinion that the impact of these differences is limited when assessing the likelihood of confusion between the marks at issue, for the reasons explained above.

The applicant claims that his client spent a lot of money developing the brand and the corresponding website. However, this argument is not relevant in the assessment of the likelihood of confusion between the marks in question and is therefore set aside.

Therefore, on the basis of all the foregoing and taking into account that the average consumer only rarely has the chance to make a direct comparison between the marks, it must be concluded that the differences between the marks are not sufficient to counterbalance the overall similarity between them. Even consumers who pay 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in Germany and therefore the opposition is well founded on the basis of the opponent’s European Union and German trade mark registrations.

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 that the contested trade mark must be rejected for all the contested services.

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

María del Carmen SUCH SÁNCHEZ

Sylvie ALBRECHT

Francesca CANGERI SERRANO

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.