OPPOSITION No B 3 047 289

O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, Cambridge CB25 9PD, United Kingdom (professional representative)

a g a i n s t

Simply Better, Chaussée de Tubize 483a, 1420 Braine-L'Alleud, Belgium (applicant).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 289 is upheld for all the contested services.

2. European Union trade mark application No 17 540 601 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 17 540 601 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 9 279 456 for the word mark ‘O2’. The opponent invoked Articles 8(1)(b) and 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 registration No 9 279 456 for the word mark ‘O2’, since it is one of the closest to the contested sign covering the relevant services.

a) The services

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

Class 43: Services for providing food and drink; temporary accommodation; 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; Accommodation reservations (temporary-); boarding house bookings; hotel reservations; rental of chairs, tables, table linen, glassware; rental of tents; rental of transportable buildings.

The contested services are the following:

Class 43: Food and drink catering; contract food services; restaurant services; mobile catering services; outside catering services; private members dining club services; bar services; café services.

The contested food and drink catering; contract food services; restaurant services; mobile catering services; outside catering services; private members dining club services; bar services; café services are included in the broad category of the opponent’s services for providing food and drink. Therefore, they are identical.

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 services found to be identical are directed at the public at large. The degree of attention is average.

c) The signs

O2
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.

The word elements ‘la terrasse’ of the contested mark constitute differing elements between the signs (see comparison below). Given that they form a meaningful expression in French, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public since, for these consumers, the differing elements referred to have a reduced impact for the reasons explained below.

The earlier mark refers to the concept of a chemical formula, namely, oxygen in its most stable form. The fact that the earlier mark 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, for example. 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, since it has no meaning related to them. The Office does not agree with the opponent’s view regarding the inherent high distinctiveness of the earlier mark (due to the fact that the element ‘O2’ is unusual in the context of the services applied for), since enhanced distinctiveness can only be attributed to a mark based on intensive use and recognition on the market.

As to the contested sign, the elements ‘la terrasse’ will be understood by the relevant public as ‘the part of the sidewalk running along a café, bar or restaurant, and where are tables and seats for consumers’. Bearing in mind that the relevant services are related to the provision of food and drink typically held also in outside seating areas or terraces, as claimed by the opponent this expression is descriptive due to the association that could be made with the services involved, and is, therefore, non-distinctive.

Despite the figurative depiction of the element ‘O2’ in the contested sign where the numeral ‘2’ is not subscript and has a line above, this does not alter the fact that the public will most probably perceive the same concept of the chemical formula, also because of the smaller size of said element as regards the letter ‘O’, simulating a subscript. Indeed, as mentioned previously, this chemical formula has a clear meaning which will be readily grasped by the relevant public and is, moreover, distinctive in relation to the relevant services.

Contrary to the opponent’s assertions, it is considered that all the elements of the contested sign have more or less a comparable visual impact and that neither of the elements can be held clearly more dominant (visually eye-catching) than the others.

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

Visually and aurally, the signs coincide in the element ‘O2’ (pronounced ‘O deux’), thus the whole of the earlier mark is entirely incorporated in the contested sign as a distinctive element. The signs differ in the additional elements ‘la terrasse’ placed at the beginning of the contested sign, which are of low significance as regards the services involved and may even not be referred to aurally. Further, the marks also differ visually in the figurative component which is of a lesser impact in the contested sign, including its fairly standard typeface, green colour and purely decorative element.

Therefore, bearing in mind the previous assertions regarding the distinctiveness of the elements in the signs, 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 as regards the relevant services, the marks are conceptually similar to a high degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys 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 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 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 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 the services on which the opposition is based. They are directed at the public at large with an average degree of attention. The inherent distinctiveness of the earlier mark is normal.

It has also been concluded that, on the basis of the French-speaking part of the public, the signs are visually and aurally similar at least to an average degree, and conceptually highly similar, since the earlier mark ‘O2’ is fully reproduced in the contested sign as an independent element and its most distinctive part, even if its figurative rendition is slightly stylised. The differing elements are non-distinctive, lowly distinctive or have a lower impact, as explained above.

Even though there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52). Therefore, the fact that the different beginning of the contested sign is non-distinctive is relevant for the present case.

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 mark, 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 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 sign.

Considering all the above, there is a likelihood of confusion on the part of the French-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 registration No 9 279 456. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right No 9 279 456 leads 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 examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Likewise, given that the opposition is successful on the basis of Article 8(1)(b) EUTMR and on the inherent distinctiveness of the earlier mark, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR, or the enhanced degree of distinctiveness due to the reputation of the opposing mark.

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 PÉREZ SANTONJA

Victoria DAFAUCE MENENDEZ

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.