OPPOSITION No B 3 047 464

Zaplox AB, Scheelevägen 17, 223 70 Lund, Sweden (opponent), represented by AWA Sweden AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative)

a g a i n s t

Edelen SARL, Zone Industrielle de Saint Mitre, Avenue de la Roche Fourcade, 13685 Aubagne, France (applicant), represented by SCP Akheos, Le Ponant Littoral, Bât E, 7, Avenue André Roussin, 13016 Marseille, France (professional representative).

On 08/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 464 is partially upheld, namely for the following contested goods and services:

Class 9: Downloadable computer software (recorded programs) on users’ mobile terminals for tracking and managing the reception of parcels in secure boxes; downloadable mobile applications on users’ mobile terminals for tracking the reception of parcels in secure boxes; mobile applications equipped with a user interface for communications via electronic messages relating to the delivery of parcels.

Class 38: Communications via mobile terminals or via fibre-optic networks; telecommunications services, namely hotlines for giving notification of incidents during the reception of parcels; telecommunications, namely hotlines for giving notification of incidents affecting the functioning of secure boxes for the reception of parcels belonging to service users, including damage to property or mechanical faults; telecommunications for tracking the reception of parcels in users’ secure boxes.

Class 42: Providing online mobile applications; development (design), installation, maintenance, updating or rental of computer software for managing the reception of parcels in secure boxes; computer programming for the development, maintenance and updating of mobile applications for managing the reception of parcels delivered to private homes or company premises.

2. European Union trade mark application No 17 220 617 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 220 617 ‘ZABOX’. The opposition is based on international trade mark registration No 1 101 627 ‘ZAPLOX’ designating the European Union. 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.

a) The goods and services

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

Class 9: Computer software for controlling locks.

Class 38: Telecommunication, namely mobile interactive services for controlling locks.

Class 42: Consulting services concerning computer software for controlling locks; design and maintenance of computer software for controlling locks.

The contested goods and services are the following:

Class 9: Downloadable computer software (recorded programs) on users’ mobile terminals for tracking and managing the reception of parcels in secure boxes; downloadable mobile applications on users’ mobile terminals for tracking the reception of parcels in secure boxes; mobile applications equipped with a user interface for communications via electronic messages relating to the delivery of parcels.

Class 35: Arranging subscriptions for the reservation of parcels in secure boxes at home in jointly-owned properties and in companies.

Class 38: Communications via mobile terminals or via fibre-optic networks; telecommunications services, namely hotlines for giving notification of incidents during the reception of parcels; telecommunications, namely hotlines for giving notification of incidents affecting the functioning of secure boxes for the reception of parcels belonging to service users, including damage to property or mechanical faults; telecommunications for tracking the reception of parcels in users’ secure boxes.

Class 39: Providing information via a mobile application relating to the reception of parcels in secure boxes; logistics in connection with home parcel delivery; storage of parcels in secure letterboxes installed in the premises of individuals or companies; reception of parcels in secure boxes in the premises of individuals and companies; reservation of space in a parcel box for the reception of parcels in secure boxes.

Class 42: Providing online mobile applications; development (design), installation, maintenance, updating or rental of computer software for managing the reception of parcels in secure boxes; computer programming for the development, maintenance and updating of mobile applications for managing the reception of parcels delivered to private homes or company premises.

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 ‘including’, used in the applicant’s list of services, indicates that the specific 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’, used in both lists of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the 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 downloadable computer software (recorded programs) on users’ mobile terminals for tracking and managing the reception of parcels in secure boxes; downloadable mobile applications on users’ mobile terminals for tracking the reception of parcels in secure boxes; mobile applications equipped with a user interface for communications via electronic messages relating to the delivery of parcels are highly similar to the opponent’s computer software for controlling locks, as they usually have the same nature, producers, relevant public and distribution channels.

Contested services in Class 35

The contested arranging subscriptions for the reservation of parcels in secure boxes at home in jointly-owned properties and in companies consists of services provided to manage the regular payment required to receive parcels in a secure box. It is dissimilar to all the opponent’s goods and services, as they have different purposes, distribution channels and methods of use. They are neither in competition nor complementary to each other.

Contested services in Class 38

The contested communications via mobile terminals or via fibre-optic networks; telecommunications services, namely hotlines for giving notification of incidents during the reception of parcels; telecommunications, namely hotlines for giving notification of incidents affecting the functioning of secure boxes for the reception of parcels belonging to service users, including damage to property or mechanical faults; telecommunications for tracking the reception of parcels in users’ secure boxes are at least highly similar to the opponent’s telecommunication, namely mobile interactive services for controlling locks, as they usually have the same nature, producers, relevant public and distribution channels.

Contested services in Class 39

The contested providing information via a mobile application relating to the reception of parcels in secure boxes; logistics in connection with home parcel delivery; storage of parcels in secure letterboxes installed in the premises of individuals or companies; reception of parcels in secure boxes in the premises of individuals and companies; reservation of space in a parcel box for the reception of parcels in secure boxes consist of services relating to the storing, logistics and reception of goods. Therefore, they are dissimilar to all the opponent’s goods and services, as their nature, purpose, distribution channels and methods of use are different. They are neither in competition nor complementary to each other.

Contested services in Class 42

The contested development (design), installation, maintenance, updating of computer software for managing the reception of parcels in secure boxes; computer programming for the development, maintenance and updating of mobile applications for managing the reception of parcels delivered to private homes or company premises are highly similar to the opponent’s design and maintenance of computer software for controlling locks, as they usually have the same nature, producers, relevant public and distribution channels.

The contested providing online mobile applications; rental of computer software for managing the reception of parcels in secure boxes is similar to the opponent’s computer software for controlling locks in Class 9, as they usually have the same provider/producer, relevant public and distribution channels.

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 similar to varying degrees are specialised goods and services directed at average consumers and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average depending on the nature and price of the goods and services.

c) The signs

ZAPLOX	ZABOX
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Although the contested sign is meaningless as a whole, the English-speaking part of the public may perceive the element ‘BOX’ as a component, especially taking into account that the relevant goods and services relate to ‘secure boxes’. However, this element is meaningless in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the Spanish- and Italian-speaking parts which will perceive the contested sign as a single meaningless word without any distinguishable components.

The earlier mark and the contested sign do not have any meaning for the relevant public. Therefore, they are distinctive to an average degree in relation to the relevant goods and services.

Visually and aurally, the signs coincide in their first two letters and sound, ‘ZA’, and in their last two letters and sound, ‘OX’. The signs differ in their middle letters and sound, ‘PL’ in the earlier mark and ‘B’ in the contested sign. However, contrary to the applicant’s arguments, these differing letters will not create significant visual and aural differences between the signs, as the third letters ‘P’ and ‘B’ are similar visually and aurally (being both bilabial occlusive consonants). In addition, the signs are of similar length, the earlier mark having six letters and the contested sign five. Although, as correctly pointed out by the applicant, the signs cannot, for that reason alone, be regarded as visually similar. Having almost the same number of letters, the majority of which coincide, has an impact on the degree of similarity between the signs. Moreover, when pronounced, the signs will have similar rhythm and intonation.

Therefore, the signs are visually and aurally highly similar.

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.

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.

e) Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The degree of attention may vary from average to higher than average, and the degree of distinctiveness of the earlier mark is considered normal.

In spite of the differences in the middle of the words ‘ZAPLOX’ of the earlier mark and ‘ZABOX’ of the contested sign, the overall similarity between the signs in question is evident, due to the commonalities at their beginnings and endings.

Account must also be taken of the facts 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), and that even consumers who pay a higher 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).Consequently, it cannot be safely excluded that the relevant consumers, even those with a higher-than-average degree of attention, will confuse the marks.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish- and Italian-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 101 627. 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 goods and services found to be identical or similar to varying degrees 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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Rasa BARAKAUSKIENE

Erkki MUNTER

Zuzanna STOJKOWICZ

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.