OPPOSITION No B 3 050 662

Deutsche Telekom AG, Friedrich-Ebert-Allee 140, 53113, Bonn, Germany (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008, Barcelona, Spain (professional representative)

a g a i n s t

Typeform S.L., Carrer de Bac de Roda 163, 08018 Barcelona, Spain (applicant), represented by Aguilar i Revenga, Consell de Cent 415 5° 1ª, 08009 Barcelona, Spain (professional representative).

On 14/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 662 is upheld for all the contested goods.

2. European Union trade mark application No 17 626 615 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 of European Union trade mark application No 17 626 615 for the figurative mark . The opposition is based on German trade mark registration No 302 015 044 707 for the word mark ‘T.

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 goods

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

Class 9: Computer programs [recorded]; Computer software, including computer game software [downloadable]..

The contested goods are the following:

Class 9: Computer programs and interactive computer software for creating forms and surveys.

An interpretation of the wording of the list of the opponent’s goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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).

The contested computer programs for creating forms and surveys are included in or in any case, they overlap with the opponent’s computer programs [recorded]. They are identical.

The remaining contested interactive computer software for creating forms and surveys are included in the broad category of the opponent’s computer software. Consequently, 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 goods found to be identical are directed at the public at large and at business customers with specific professional knowledge and expertise. The relevant public will display an average degree of attention in relation to those goods.

3. The signs

T
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 signs coincide completely in their verbal constituent, namely the letter ‘T’, and this letter will be instantly perceived by the relevant public in the relevant territory. Furthermore, since it has no descriptive and/or weak meaning in relation to the relevant goods, its inherent distinctiveness in relation to them is average.

The applicant claims that a simple letter of the alphabet should not be registered as a mark for being usually deprived of the distinctive character. Furthermore, the applicant argues that this lack of distinctive character is enforced by the fact that the goods covered by such mark belong to the field of telecommunications.

In this regard, in the first place, it should be mentioned that the Court, in its judgment of 24/05/2012 C-196/11 P, F1‑Live, EU:C:2012:314, § 40-41, made it clear that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. Accordingly, the earlier marks as a whole, should always be considered to have at least a minimum degree of inherent distinctiveness.

Furthermore, the Opposition Division notes that the Court, in its judgment of 09/09/2010, C-265/09 P, α, EU:C:2010:508, held that the distinctiveness of single-letter trade marks must be assessed according to an examination based on the facts, focusing on the goods or services concerned and the same criteria that apply to other word marks (paras 33-39). Although that judgment deals with absolute grounds, the Office considers that the principle established by the Court (i.e. that the application of the criterion of distinctiveness must be the same for all marks) also applies in inter partes cases when it comes to determining the distinctiveness of single-letter trade marks.

The Court, while acknowledging that it may prove more difficult to establish distinctiveness for marks consisting of a single letter than for other word marks, held that these circumstances do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law.

The Office considers the ruling to mean that, when establishing the distinctiveness of an earlier mark, it is not correct to rely on assumptions such as a priori statements that consumers are not in the habit of perceiving single letters as trade marks or on generic arguments such as that relating to the availability of signs, given the limited number of letters.

The General Court has since stated in a number of cases that a trade mark containing a single letter or a single numeral may indeed be inherently distinctive (judgments of 08/05/2012, T-101/11, G, EU:T:2012:223, § 50; 06/10/2011, T-176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T-378/12, X, EU:T:2013:574, § 37-51).

In its judgment of 10/05/2011, T-187/10, G, EU:T:2011:202, the General Court dismissed the applicant’s argument that single letters are generally per se devoid of distinctive character and that therefore only their graphic representation would be protected (see paras 38 and 49).

Consequently, whilst registered earlier trade marks consisting of a single letter (or numeral) represented in standard characters enjoy a presumption of validity, ultimately their degree of inherent distinctiveness will have to be assessed with reference to the goods and/or services concerned.

The above considerations apply both to single-letter/-numeral trade marks represented in standard characters (i.e. word marks) and to stylised single-letter/-numeral trade marks.

As regards the goods at issue (computer software/program), the Opposition Division is of the opinion that the single letter mark ‘T’ is not intrinsically non-distinctive in relation to them as it would be a case of the signs consisting of the icons depicting the letters ‘W’ for ‘Word’, ‘X’ for ‘Excel’ and ‘P’ for PowerPoint, as they directly refer to the most popular computer program/software (both being closely connected as software can be made up of more than one program). Therefore, although the relevant goods are used in the broad field of telecommunications, this does not render them immediately non-distinctive or even weak in relation to those goods. For the sake of completeness, it should be mentioned that the present assessment is made in relation to the goods as registered and although other interpretations of the letter ‘T’ cannot be excluded, the relevant part of the public will not perceive any meaning in this element, apart from the letter itself. Furthermore, no evidence has been submitted to prove the claim that the public will understand ‘T’ as a descriptive indication in relation to computer software/program.

Furthermore, the applicant quotes one previous Office decision (Decision of the First Board of Appeal of 10/04/2008) and one national decision (decision of the UK IP Office of 21/10/2011) rejecting oppositions involving ‘T’ marks due to their low distinctive character per se.

Regarding the previous Office decision, the Opposition Division notes that even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. Additionally, it must be emphasized that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. The changes in the Office practice must also be taken into account. For this reason, even in cases based on comparable facts and involving similar legal problems, the outcome may still vary due to the different submissions made by the parties and the evidence they present. In any case, in the posterior judgment of 10/05/2011, T-187/10, G, EU:T:2011:202, the General Court dismissed the applicant’s argument that single letters are generally per se devoid of distinctive character and that therefore only their graphic representation would be protected (see paras 38 and 49).

As far as the previous national decision of the UK IP Office is concerned it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the relevant territory is German territory and whilst it is, in principle, permissible to take into account decisions of national courts and authorities, these decisions should be examined with all the required care and in a diligent manner (judgment of 15/07/2011, T-108/08, Good Life, EU:T:2011:391, § 23). Usually the understanding of such a decision will require the submission of sufficient information, in particular about the facts on which the decision was based. Their indicative value will therefore be limited to the rare cases when the factual and legal background of the case was presented completely in the opposition proceedings and is conclusive, clear and not disputed by the parties. No further submissions and evidence have been filed in this regard and, consequently, the claim of the applicant must be set aside.

The figurative elements of the contested sign are reduced to a non-distinctive black square and white irregular circle and their role in the sign is strictly ornamental. The typeface in which the letter ‘T’ is depicted is manifestly commonplace. It is for this reason that the verbal element of the sign is considered more distinctive than the figurative elements. The contested sign has no dominant element/s.

Visually, the signs coincide in the letter ‘T’, which constitutes the entirety of the earlier mark and the only verbal element of the contested sign. They differ in the graphical stylisation of the contested sign, which plays a purely ornamental role within it.

Consequently, the signs are considered visually similar at least to an average degree.

The signs are aurally and conceptually identical as the figurative features of the contested sign are not subject of an aural comparison and, in any case, their impact of the comparison of the signs is strongly limited (conceptually), as analysed above.

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.

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 goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the goods have been found identical. The signs are considered visually similar at least to an average degree, while aurally and conceptually they are identical.

The signs have in common the letter ‘T’, which constitutes the only element of the earlier mark and the most distinctive element of the contested sign. The visual differences between the signs, as established above, are clearly insufficient to create any distance between the signs in question. Additionally, the stylisation of the contested sign is not such as to obviate the likelihood of confusion between the signs. This is especially the case since, according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Based on this principle, consumers might believe that the conflicting goods found to be identical come from the same undertaking or economically-linked undertakings.

The applicant argues that the overall impression of the signs has an extreme relevance when the marks to be compared are short and the accent should be put on the graphical and visual comparison of the signs.

In this regard, the Opposition Division fully agrees with the applicant’s view and refers to the above-mentioned conclusions regarding a similar overall impression given by the signs caused by their common distinctive verbal element and the limited impact of the remaining graphical futures of the contested sign. Furthermore, for this precise reason, the signs have been found visually similar at least to an average degree in the present case. Moreover, they are aurally and conceptually identical.

Additionally, the applicant quotes some previous decisions of the Office (B 2586587 of 19/03/2018, B 2782848 of 22/08/2018 and B 2875689 of 18/05/2018) and some examples from the Guidelines regarding a comparison of the one-letter signs to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases and examples from the Office Guidelines referred to by the applicant are not relevant to the present proceedings. Firstly, they refer to decisions in which the signs under comparison were both figurative. In fact they were found to be visually dissimilar due to different stylisations of the single-letter signs and, therefore, the final outcomes of these cases were those of no likelihood of confusion.

The fact that conflicting signs comprise the same single letter can lead to a finding of visual similarity between them, depending on the particular way the letters are depicted, which is very relevant for the case at issue. In the present case, the letter ‘T’ present in both signs is depicted in a standard and essentially identical typeface. As established above, the remaining figurative elements of the contested sign are rather banal and, in any case, they do not constitute elements that will be remembered by the relevant public as effectively distinguishing and distinctive features. Consequently, the applicant’s arguments in this regard must be set aside.

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

The opposition is therefore well found on the basis of the opponent’s German trade mark registration No 302 015 044 707 and the contested trade mark must be rejected in its entirety.

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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Gueorgui IVANOV

Monika CISZEWSKA

Anna MAKOWSKA

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.