OPPOSITION Nо B 3 023 382

Xfera Moviles, S.A., Avda. de la Vega, 15, 28100 Alcobendas (Madrid), Spain (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1º, 28010 Madrid, Spain (professional representative)

a g a i n s t

Yoimo AS, Gaustadalléen 21, 0349 Oslo, Norway (applicant).

On 22/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 023 382 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 367 715 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 17 367 715 ‘YOIMO’ (word mark). The opposition is based on, inter alia, Spanish trade mark registration No 2 730 813 ‘YOIGO’ (word mark). 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 Spanish trade mark registration No 2 730 813.

a) The goods and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipments; electronic publications (downloadable electronically).

Class 35: Business management; business administration; market studies; exportation; professional consultancy relating to business management; book-keeping; telephone answering for unavailable subscribers; transcription of communications; statistical information; preparation of business and commercial reports; business surveys; opinion pulling; publicity.

Class 38: Telecommunication, particularly mobile telephone services; television and radio broadcasting; leasing of telecommunication apparatus; computer aided transcription of messages and images; providing access to a global computer network.

Class 41: Editing of television and radio programmes; leisure and entertainment services; editing of writing text, other than publicity texts; education, training; arranging of colloquiums, conferences, congresses, seminars.

Class 42: Computer programming; computer aided preparation and conducting of technical and economical reports; preparation of telecommunications and software projects and studies; design of electronical components and circuits; analysis relating to needs of others.

The contested goods and services are the following:

Class 9: Software for streaming and viewing audiovisual and multimedia content via the internet and global communications networks; software for streaming and viewing audiovisual and multimedia content for digital electronic devices; computer program tools for software development for creating programs and applications for streaming and viewing audiovisual and multimedia content; hardware for recording, viewing and streaming of audiovisual and multimedia content, namely digital media, digital cameras and digital video devices consisting of audio and video receivers; downloadable software to enable uploading, publishing, live streaming, viewing, labeling, blogging, sharing or otherwise providing electronic media or information via the internet.

Class 35: Subscription of audiovisual and multimedia content; developing and providing marketing programs for streaming services of audiovisual and multimedia content; providing space for advertisement on websites and during streaming and viewing of audiovisual and multimedia content.

Class 38: Telecommunication services, namely the transmission of electronic media, audiovisual and multimedia content via the internet and other communications networks; broadcasting, webcasting, streaming and transmission of electronic media, audiovisual and multimedia content via the internet and electronic communication networks; providing access to platform in the form of forums and chat rooms for users to upload, search, watch, share and comment videos and other multimedia content via the internet and other communication networks.

Class 41: Entertainment services namely providing a website with audiovisual and multimedia content via the internet and global communication networks; providing non-downloadable video recordings via on-demand services; entertainment services including recording and playback operational services of audiovisual and multimedia content for others via the internet, mobile platforms and local data networks.

Class 42: Application service provider services (ASP), namely software that enables uploading, publishing, viewing, labeling, blogging, sharing or otherwise providing electronic, audiovisual and multimedia content via the internet and other communication networks; development of software, programming and implementation related to the recording and playback of audiovisual and multimedia content; IT-services, namely creation of virtual communities for chatting, searching, playback, viewing and sharing of videos and other multimedia content via the internet and other communication networks; providing non-downloadable software for use in connection with transmission, streaming, viewing and downloading of audiovisual and multimedia content.

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

However, the term ‘namely’, used in the applicant’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 hardware for recording, viewing and streaming of audiovisual and multimedia content, namely digital media, digital cameras and digital video devices consisting of audio and video receivers are included in, or overlap with, the opponent’s broad category of apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested software for streaming and viewing audiovisual and multimedia content via the internet and global communications networks; software for streaming and viewing audiovisual and multimedia content for digital electronic devices; computer program tools for software development for creating programs and applications for streaming and viewing audiovisual and multimedia content; downloadable software to enable uploading, publishing, live streaming, viewing, labeling, blogging, sharing or otherwise providing electronic media or information via the internet are similar to the opponent’s data processing equipments because they are complementary and coincide in distribution channels, relevant public and producer.

Contested services in Class 35

The contested providing space for advertisement on websites and during streaming and viewing of audiovisual and multimedia content; developing and providing marketing programs for streaming services of audiovisual and multimedia content are included in, or overlap with, the opponent’s broad category of publicity. Therefore, they are identical.

The contested subscription of audiovisual and multimedia content are services intended to provide active help with the internal day-to-day operations of other undertakings that contract these services, including administration and support services in the ‘back office’. These services and the opponent’s business management services can be offered by the same specialised suppliers and are aimed at the same consumers, namely professional business customers. They also contribute to the same purpose, namely the efficient running and success of an undertaking. Therefore, they are similar to a low degree.

Contested services in Class 38

The contested telecommunication services, namely the transmission of electronic media, audiovisual and multimedia content via the internet and other communications networks; broadcasting, webcasting, streaming and transmission of electronic media, audiovisual and multimedia content via the internet and electronic communication networks; providing access to platform in the form of forums and chat rooms for users to upload, search, watch, share and comment videos and other multimedia content via the internet and other communication networks are included in the opponent’s broad category of telecommunication, particularly mobile telephone services. Therefore, they are identical.

Contested services in Class 41

The contested entertainment services namely providing a website with audiovisual and multimedia content via the internet and global communication networks; providing non-downloadable video recordings via on-demand services; entertainment services including recording and playback operational services of audiovisual and multimedia content for others via the internet, mobile platforms and local data networks are either included in, identically covered by, or overlap with, the opponent’s broad category of entertainment services. Therefore, they are identical.

Contested services in Class 42

The contested development of software, programming and implementation related to the recording and playback of audiovisual and multimedia content; IT-services, namely creation of virtual communities for chatting, searching, playback, viewing and sharing of videos and other multimedia content via the internet and other communication networks are included in, or overlap with, the opponent’s broad category of computer programming. Therefore, they are identical.

The contested application service provider services (ASP), namely software that enables uploading, publishing, viewing, labeling, blogging, sharing or otherwise providing electronic, audiovisual and multimedia content via the internet and other communication networks; providing non-downloadable software for use in connection with transmission, streaming, viewing and downloading of audiovisual and multimedia content are similar to the opponent’s computer programming since these services can target the same relevant public, share the same distribution channels and be provided by the same undertakings.

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 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, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

YOIGO	YOIMO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 marks do not have any meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs coincide in the letters/sounds ‘YOI(*)O’, placed in the same order and position. They only differ in their fourth letter/sound, ‘G’ of the earlier mark and ‘M’ of the contested sign, which, however, does not lead to a different rhythm or intonation or constitute a significant visual difference in their overall impression.

Therefore, the signs are visually and aurally similar to an above-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.

d) Distinctiveness and the well-known character 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection and it is well known. 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 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods and services concerned are identical or similar to varying degrees and target the general public and the specialised public, whose degree of attention may vary from average to high.

The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an above-average degree, due to the coincidence of most of their letters, ‘YOI(*)O’, placed in the same order and position. They only differ in their fourth letter, ‘G’ of the earlier mark and ‘M’ of the contested mark. Furthermore, there is no conceptual difference between the signs that could otherwise help consumers to more easily distinguish between them.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the above-average degree of visual and aural similarities between the signs and the lack of any conceptual difference between them offset the low degree of similarity between some of the services concerned.

Account is 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 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).

Taking all the above into account, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or similar (even to a low degree) goods and services, is likely to believe that they come from the same undertaking or from economically linked undertakings.

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

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 730 813. It follows that the contested trade mark must be rejected for all the contested goods and services, including for those found to be similar to a low degree.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and well-known character as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness and was well known.

As the earlier Spanish trade mark registration No 2 730 813 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 rights 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

Sam GYLLING

Francesca DRAGOSTIN

Valeria ANCHINI

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.