OPPOSITION Nо B 3 106 099

 

Verivox GmbH, Am Taubenfeld 10, 69123 Heidelberg, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative) 

 

a g a i n s t

 

Vivo Mobile Communication Co., Ltd., No.168 Jinghai East Rd., Chang'an, Dongguan, Guangdong, People’s Republic of China (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine, Italy (professional representative).

On 30/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 106 099 is partially upheld, namely for all the contested services except for the following:

 

Class 41: Organization of competitions [entertainment]; organization of exhibitions for cultural purposes; arranging and conducting of concerts; on-line publication of electronic books and journals; providing on-line electronic publications, not downloadable; providing on-line music, not downloadable; providing online music, not downloadable; providing online videos, not downloadable; photography; photographic reporting; news reporters services; club services [entertainment]; party planning [entertainment]; game services provided on-line from a computer network; entertainment services; health club services [health and fitness training]; games equipment rental; prize draws [lotteries].   Class 45: Monitoring of burglar and security alarms; leasing of internet domain names; marriage agency services.

2.

European Union trade mark application No 18 120 506 is rejected for all the contested services except for the above mentioned, in relation to which it may proceed. The application can also proceed in respect of the goods and services that were not contested in these proceedings.

 

3.	Each party bears its own costs.

 

REASONS

 

On 13/12/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 120 506 (figurative mark), namely against all the services in Classes 35, 36, 38, 41 and 42 and against part of the services in Class 45. The opposition is based on European Union trade mark registrations No 8 270 274 and No 11 688 199 for the word mark ‘verivox’ (earlier marks 1 and 2) and No 15 556 079 for the figurative mark (earlier mark 3). The opponent invoked Article 8(1)(b) EUTMR in relation to all earlier marks and, in addition, Article 8(5) EUTMR in relation to earlier mark 3.

 

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  services

 

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

EUTM No 8 270 274 (earlier mark 1)

Class 35: Advertising; business management services; business administration; office functions.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Class 38: Telecommunications.

Class 42: Scientific and industrial research; creation of data-processing programs.

EUTM No 11 688 199 (earlier mark 2)

Class 35: Arranging commercial transactions, for others; arranging and rental of advertising space, in particular on the internet and other new media; arranging of contracts for the buying and selling of goods and the use of services, for others, and the billing therefor (office functions), including via an electronic marketplace; arranging subscriptions to telecommunication services for others; arranging mobile radio contracts (for others); electronic commerce provider and management services, namely presentation of goods and services, order placement, order delivery and invoice management for electronic ordering systems; price comparison services; advertising and marketing, including on digital networks; webvertising, namely marketing, for others, on digital networks; services of an advertising agency; provision of auctioneering services on the internet; internet-based auctioneering; marketing, including on digital networks; arranging contracts with electricity and gas suppliers.

Class 36: Brokerage; credit bureaux; financial affairs; monetary affairs; mutual funds and insurance brokerage, including all being internet-based.

EUTM No 15 556 079 (earlier mark 3)

Class 35: Services of a consultancy; commercial information services; business management and organization consultancy; professional business consulting; business inquiries and business organisation consultancy; marketing and sales research; efficiency experts; collating and systematic ordering of data in a computer database; all the aforesaid services in particular for the fields of telecommunication, distribution of energy, the insurance industry and treasury management services, in particular for comparison services in these fields; advertising and marketing; information in the field of marketing and advertising in oral and written form, including by means of print media and electronic media; organisational consultancy in the field of marketing and advertising; statistical evaluations of marketing data; marketing studies; market analysis; advertising research; opinion polling; distribution of catalogues, mailing lists and goods for advertising purposes; radio, television and cinema advertising, public relations, sales promotion, arranging commercial transactions, for others; computerised file management; arranging and conducting of trade fairs and exhibitions for commercial and advertising purposes; marketing of advertising time on television by arranging the relevant contracts, for others; business management and organisation consultancy; advertising, in particular radio, television, cinema, print, videotext and teletext advertising; marketing of advertising, in particular on the aforesaid media and via the aforesaid media, by arranging the relevant contracts, for others; dissemination of advertising prospectuses; production of promotional films; rental of advertising films; telephone order placement for teleshopping; arranging advertising time in all relevant media; telephone answering for unavailable subscribers; planning services for advertising; creation, updating and rental of advertising space on the internet; banner exchange, namely rental of advertising space on the internet; talent promotion through organisational consultancy; issuing of customer cards and membership cards, for others, without payment functions; market research data collection services; updating of data content in computer databases; processing of data through systemisation in computer databases; sports promotion through advertising; capturing and processing fee data, for calculating fees, included in class 35; advertising and professional business consultancy with regard to television advertising, television entertainment and sport; producing television and radio adverts; business management; business administration; office functions; business organisation consulting; typing; secretarial services; business consultancy and advisory services; professional business consulting; representation of commercial interests, to others; development of advertising concepts, in particular for marketing goods and services via worldwide electronic networks, in particular the internet and other electronic communications media; arranging contracts for the buying and/or selling of goods, for others; electronic commerce provider services, namely order placement and order delivery service as well as invoice management for electronic ordering systems; dissemination of advertising on an online electronic communications network; price research for others using computers; auctioneering on the internet; professional business and organisational consultancy for franchise concepts; operating exchanges for the buying of goods; call centre services, namely order acceptance and placement; collating and systemisation of information in computer databases; data logging (office functions); operating of ticket booking offices for commercial events, included in class 35; organisation and arranging of lectures and multimedia presentations for advertising and/or commercial purposes; systemising of data in computer databases, collating of data in databases; arranging of contracts with regard to rights to films, television and radio productions and other image and sound programmes, and of print media and other printed products, arranging of contracts with regard to rights to press, radio, television and film articles for use on sound and image carriers; arranging of contracts with regard to rights to articles in newspapers and periodicals; adjustment and structuring of data in computer databases; updating data in computer databases; maintenance of data in computer databases; computer databases (compilation of information into-); compilation of information into computer databases; operating ticket booking offices for commercial events; storage of fee data for calculating fees.

Class 36: As listed in the Notice of opposition.

Class 38: As listed in the Notice of opposition.

Class 39: Providing information regarding tariffs in energy supply; online services, namely the providing of information and news regarding energy supply tariffs and the energy sector in the form of images and sound; booking of seats (travel); tourist travel reservation services; booking agency services for sightseeing tours; travel agency and booking services; reservation and booking services for transportation; booking of holiday travel and tours; booking of travel through tourist offices; arranging and booking of day trips; arranging and booking of excursions; arranging and booking of travel; arranging and booking of tours; travel agency and booking services; travel agency and booking services; arranging and booking of sightseeing tours; providing information relating to bicycle rental services.

Class 42: Computer programming; consultancy in the field of computers; design, maintenance and up-dating of computer software; system analysis; rental of software and data processing equipment; recovery of computer data; all these services limited to the telecommunications, energy supply, insurance industry and financial management fields, limited to comparison services in these fields; installation and maintenance of software; technical consultancy in the field of multimedia, interactive television and Pay TV (included in class 42); software development; computer programming, including video and computer games; development of electronic television programme guides; engineering services, in particular in the fields of multimedia, digital and/or interactive television and telecommunications; internet provider services, namely installation and maintenance of computer software (for internet access); rental of memory space on computer systems connected to the internet; design of web pages; technical planning of telecommunications equipment; graphic arts designing and designer services; scientific and technological services and research and design relating thereto, industrial analysis and research, design and development of computers and software; technical consultancy in the field of marketing and advertising; server administration; graphic design, namely design of printed media; graphic design, namely design of printed matter and publications, including the corresponding electronic media; internet design; electronic data storage; rental of computer capacity for data processing; graphic design, namely design of internet advertising; technical development of electronic television programme guides; web pages creation services; electronic data storage; updating of database software, storage of data in computer databases; providing internet platforms; providing of a platform for the supply and demand of goods/services; providing e-commerce platforms on the internet and other media; conducting exchanges through the online arranging of contracts for the buying of goods within the framework of providing platforms on the internet; providing digital media platforms for the exchange of messages and information of all kinds on the internet, including by converting formats into speech, sound, images, text, data or other output media; establishing homepages on the Internet.

The contested services are the following:

Class 35: Publicity; presentation of goods on communication media, for retail purposes; provision of space on websites for advertising goods and services; on-line advertising on a computer network; providing business information via a website; organization of exhibitions for commercial or advertising purposes; commercial information and advice for consumers in the choice of products and services; import-export agency services; sales promotion for others; provision of an on-line marketplace for buyers and sellers of goods and services; compilation of information into computer databases; systemization of information into computer databases; arranging subscriptions to telecommunication services for others; updating and maintenance of data in computer databases; web indexing for commercial or advertising purposes; compiling indexes of information for commercial or advertising purposes; appointment reminder services [office functions]; search engine optimisation for sales promotion; rental of office equipment in co-working facilities.

Class 36: Installment loans; exchanging money; organization of collections; clearing, financial; processing of credit card payments; processing of debit card payments; electronic funds transfer; online banking; factoring; on-line real-time currency trading; bill payment services; surety services; insurance information; providing rebates at participating establishments of others through use of a membership card; providing financial information via a web site.

Class 38: Cellular telephone communication; communications by telephone; communications by computer terminals; message sending; providing telecommunications connections to a global computer network; providing internet chatrooms; providing access to databases; voice mail services; transmission of digital files; providing online forums; radio communication; radio broadcasting; rental of telecommunication equipment; communications by fiber optic networks; information about telecommunication; electronic bulletin board services [telecommunications services].

Class 41: Teaching services; educational services; organization of competitions [education or entertainment]; organization of exhibitions for cultural or educational purposes; arranging and conducting of conferences; arranging and conducting of concerts; on-line publication of electronic books and journals; providing on-line electronic publications, not downloadable; providing on-line music, not downloadable; providing online music, not downloadable; providing online videos, not downloadable; photography; photographic reporting; news reporters services; club services [entertainment or education]; party planning [entertainment]; game services provided on-line from a computer network; entertainment services; health club services [health and fitness training]; games equipment rental; prize draws [lotteries].

Class 42: Design and development of multimedia products; technical research; research in the field of telecommunications technology; industrial design; design of mobile telephones; packaging design; computer software design; computer programming; updating of computer software; maintenance of computer software; computer system design; installation of computer software; recovery of smartphone data; software as a service [SaaS]; platform as a service [PaaS]; off-site data backup; cloud computing; unlocking of mobile phones; data encryption services; developing of driver and operating system software; providing search engines for the internet; development and design of mobile applications; design and development of software in the field of mobile applications; update of computer software.

Class 45: Monitoring of burglar and security alarms; dating services; online social networking services; leasing of internet domain names; marriage agency services.

As a preliminary remark, it is noted that in its notice of opposition, the opponent contested the terms ‘Monitoring; services’ in Class 45 of the application. The Opposition Division notes that such a term does not exist on its own in the said list and, moreover, it cannot be artificially dissected from the closest possible term, ‘Monitoring of burglar and security alarms’. Nevertheless, the Opposition Division will interpret the opponent’s act as an intent to contest the term ‘Monitoring of burglar and security alarms’ as appearing in its entirety.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

 

The term ‘in particular’ and ‘including’, used in the lists of services of both parties, indicate that the specific 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 opponent’s list 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.

 

It is also to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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 services in Class 35

The contested presentation of goods on communication media, for retail purposes; publicity; sales promotion for others; search engine optimisation for sales promotion; provision of space on websites for advertising goods and services; on-line advertising on a computer network are included in the opponent's broad category of advertising of earlier mark 1, or at least overlap with them. Therefore, they are identical.

The contested updating and maintenance of data in computer databases; compilation of information into computer databases; appointment reminder services [office functions]; systemization of information into computer databases; compiling indexes of information for commercial or advertising purposes; web indexing for commercial or advertising purposes; rental of office equipment in co-working facilities are included in the opponent's broad category of office functions of earlier mark 1. Therefore, they are identical.

The contested providing business information via a website is included in the opponent's broad category of business management services of earlier mark 1. Therefore, they are identical.

The contested commercial information and advice for consumers in the choice of products and services overlap with the opponent's commercial information services; all the aforesaid services in particular for the fields of telecommunication, distribution of energy, the insurance industry and treasury management services, in particular for comparison services in these fields of earlier mark 3, to the extent that both categories of services are provided in respect of consumers for enhancing their purchase experience. Therefore, they are identical.

The contested organization of exhibitions for commercial or advertising purposes overlaps with the opponent's arranging and conducting of trade fairs and exhibitions for commercial and advertising purposes of earlier mark 3. Therefore, they are identical.

The contested provision of an on-line marketplace for buyers and sellers of goods and services is included in, or at least overlaps with, the opponent's arranging of contracts for the buying and selling of goods and the use of services, for others, and the billing therefor (office functions), including via an electronic marketplace of earlier mark 2. Therefore, they are identical.

The contested arranging subscriptions to telecommunication services for others is identically contained in earlier mark 2.

The contested import-export agency services are similar to the opponent's business management services of earlier mark 1 because they coincide in distribution channels, they coincide in end user, they coincide in provider.

Contested services in Class 36

The contested processing of credit card payments; organization of collections; exchanging money; clearing, financial; factoring; electronic funds transfer; online banking; bill payment services; providing financial information via a web site; processing of debit card payments; providing rebates at participating establishments of others through use of a membership card; installment loans; on-line real-time currency trading are included in the opponent's broad category of financial and monetary affairs of earlier mark 1. Therefore, they are identical.

The contested insurance information; surety services are included in the opponent's broad category of insurance of earlier mark 1. Therefore, they are identical.

Contested services in Class 38

The contested message sending; information about telecommunication; providing internet chatrooms; electronic bulletin board services [telecommunications services]; communications by fiber optic networks; providing online forums; providing telecommunications connections to a global computer network; communications by telephone; communications by computer terminals; transmission of digital files; cellular telephone communication; voice mail services; radio communication; radio broadcasting; rental of telecommunication equipment; providing access to databases are included in the opponent's broad category of telecommunications of earlier mark 1. Therefore, they are identical.

Contested services in Class 41

The contested teaching services; educational services; organization of competitions [education]; arranging and conducting of conferences; club services [education]; organization of exhibitions for educational purposes are similar to the opponent's scientific research in Class 42 of earlier mark 1. By way of example, universities and other educational institutions carry out a lot of research, not only as academic training but as a stand-alone part of what they do. Universities bid on tenders to be able to provide such research services, and as such this is a service that can be provided to third parties. Similar findings may be applied in respect of their side products such as organization of scientific conferences or clubs that have in their core activity scientific researches. Thus, services under comparison can be provided by the same providers and through the same distribution channels. They also coincide in general purpose of acquiring and/or imparting or disseminating knowledge or skills.

However, the contested organization of competitions [entertainment]; organization of exhibitions for cultural purposes; health club services [health and fitness training]; prize draws [lotteries]; arranging and conducting of concerts; providing on-line music, not downloadable; providing online music, not downloadable; providing online videos, not downloadable; photography; photographic reporting; club services [entertainment]; party planning [entertainment]; game services provided on-line from a computer network; entertainment services; games equipment rental are a variety of entertainment, cultural and sport services that have the character of leisure activities addressing the public at large. The contested on-line publication of electronic books and journals; providing on-line electronic publications, not downloadable; news reporters services are services related to publishing and reporting that belong to very particular industries, and address the public at large or professional consumers in the publishing industry. Contrary to the opponent’s arguments, the above services have nothing in common with the opponent’s services in Class 35 (professional business, especially any publishing activities for advertising purposes meant for undertakings or consumer information services), Class 36 (financial services), Class 38 (telecommunications), Class 39 (transport services) and Class 42 (science and technology services, including IT services) since they essentially differ in their nature and relevant global purpose. These services will in principle target consumers with different underlying interests and will be using different distribution channels to reach them. By way of example, while the opponent’s services in Class 38 ensure the transmission and access to downloadable data of any sort (music or image content), the contested services here rather relate to the creation of that content and represent the product that reaches the end consumer instead of the means of transmission used. In general, the services originate from distinct commercial fields and consumers will rarely think that these services may be provided by the same economic entity. They are therefore dissimilar.

Contested services in Class 42

The contested computer software design; computer programming; updating of computer software; maintenance of computer software; computer system design; installation of computer software; developing of driver and operating system software; development and design of mobile applications; design and development of software in the field of mobile applications; update of computer software may include, or overlap with, the opponent's design, maintenance and up-dating of computer software; all these services limited to the telecommunications, energy supply, insurance industry and financial management fields, limited to comparison services in these fields of earlier mark 3. To the extent that the Opposition Division cannot artificially dissect these categories of services, they are found identical.

The contested software as a service [SaaS] overlaps with the opponent's rental of software; all these services limited to the telecommunications, energy supply, insurance industry and financial management fields, limited to comparison services in these field of earlier mark 3. The contested platform as a service [PaaS] overlaps with the opponent's providing Internet platforms of earlier mark 3. Therefore, they are identical.

The contested technical research; research in the field of telecommunications technology are included in, or overlap with, the opponent's industrial research of earlier mark 1. Therefore, they are identical.

The contested industrial design; packaging design include, as broader categories, the opponent's graphic design, namely design of printed media of earlier mark 3. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

The contested providing search engines for the internet overlap with the opponent's web pages creation services of earlier mark 3. Therefore, they are identical.

The contested off-site data backup; cloud computing overlap with the opponent's electronic data storage of earlier mark 3. Therefore, they are identical.

Moreover, the contested data encryption services is a process of encoding information and converting it into cyphertext and is used by electronic data storage to secure the access to that information. These services are then highly similar to the opponent’s electronic data storage of earlier mark 3, as they may have the same global purpose of safely storing data and will coincide in their relevant public, distribution channels and providers. Moreover, they are also in a complementarity relationship since the contested services may be indispensable in the provision of storage of data.

The contested unlocking of mobile phones; recovery of smartphone data are highly similar to the opponent's recovery of computer data of earlier mark 3 because they may have the same nature and purpose of IT services provided in respect of personal data security and access, only differing by the device on which the data was stored; they will then coincide in their distribution channels, target public and providers.

The contested design of mobile telephones; design and development of multimedia products are services related to the design of technology goods that allow the use of software and are to that extent similar to the opponent's design, maintenance and up-dating of computer software of earlier mark 3. These services will coincide in their distribution channels, relevant public and providers. Moreover, they may have some complementarity relationship due to the closeness between the devices on the one hand, and the software thereof, on the other hand.

Contested services in Class 45

The contested dating services; online social networking services are personal services related to providing means of communication and as such they have the same global purpose of connecting people with the opponent’s telecommunications in Class 38 of earlier mark 1. Moreover, these services are complementary to each other to the extent that one is indispensable for the other – namely the provision of social platforms or applications, including for dating, will be dependent on the provision of the respective communication services, by way of example, transmission of messages and provision of online chat rooms, forums or platforms covered under the broader category of the opponent’s services. These services will further coincide in their distribution channels and providers. Consequently, they are considered similar.

However, the contested marriage agency services; monitoring of burglar and security alarms; leasing of internet domain names are social or personal services with very specific purpose such as provision of security, performing of ceremonies and acquiring a domain name for businesses. These services would in principle target the public at large or consumers with very particular needs, respectively. Contrary to what the opponent argues, these services will originate from industries different than the ones in which the opponent’s rights have registered their services, e.g. IT companies, telecommunication companies, marketing agencies as opposed to marriage or security agencies. By way of example, the leasing of internet domain names is provided by specialised domain names registrars and not by IT companies from the sector in which the opponent’s marks cover services that may be responsible for designing the web page behind that domain name. These services also use different channels to reach their target consumers. In addition to having completely different purposes, the services of both parties show no complementarity or competition relationship and are considered dissimilar.

 

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 or similar, including to a high degree, are directed at the public at large, for instance commercial information for consumers (Class 35), online banking or providing financial information online (Class 36), telecommunications (Class 38), update and maintenance of software (Class 42), as well as at business customers with specific professional knowledge or expertise – e.g. professional business services in Class 35, specialised financial services in Class 36 such as factoring or financial clearing in Class 36, design and development of software or multimedia products, industrial research, packaging design in Class 42.

 

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased. Indeed, some of the services will require a much higher attention due to the large financial investments envisaged in them and the possible effects on the undertaking’ prosperity or consumers’ financial status, e.g. professional consultancy services in Class 35, financial matters in Class 36, industrial and technical services in Class 42.

 

c) The signs

 

Earlier marks 1 and 2 Verivox Earlier mark 3
Earlier trade marks	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 verbal elements of the signs may convey some concepts for a part of the EU consumers. By way of example, the contested sign may be associated with a meaning produced by the verbal part ‘vivo’ in Spanish/Italian/Portuguese (‘live; to live’); the concept of ‘vox’ may be recognized by par of the EU consumers as the Latin term for ‘voice’; the verbal part ‘veri’ may be perceived by the English-speakers as the misspelt version of ‘very’.

Consequently, for economy of proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the EU for which none of the verbal elements conveys a meaning and they are thus of a normal distinctiveness, that is, the Slavic-speaking part of the public such as Polish and Bulgarian consumers who will see the words as completely fanciful.

As regards the contested sign and earlier mark 3, they are composed of distinctive verbal elements and less distinctive decorative features, stylisation or/and colours of their letters that are considered to have only a minor impact on the overall perception of the signs.

 

Visually, the signs coincide in the letters ‘v*ivox’, that is to say, the signs coincide in their first letters ‘v’, as well as in their four last letters positioned in an identical order. The different verbal feature is comprised to the middle of the earlier marks, ‘er’, that have no counterpart in the contested sign and make the earlier marks slightly longer (by two more letters). Moreover, as noted above, the signs additionally differ in the stylisation and some figurative features of earlier mark 3 and the contested sign that are nevertheless seen as mere embellishment and with no decisive impact on the visual perception of the signs.

Consequently, overall, considering the coincidences in five letters out of seven in the earlier marks and the fact that the contested sign’s verbal element is entirely incorporated in the earlier marks, the signs are visually similar to an average degree, as concerns earlier marks 1 and 2, and similar below average degree as concerns earlier mark 3.

Aurally, the signs coincide in the sound of the letters ‘v*ivox’, or the sounds [v*ivoks’]. Considering that the coinciding letters form only one coinciding syllable, namely the last syllable ‘vox’, whereas they first syllables slightly differ – ‘ve-ri’ in the earlier marks versus ‘vi’ in the contested sign, it is noted that the signs may slightly differ in their rhythm and intonation produced in that difference (in particular three versus two syllables). However, as already pointed out above, the coinciding syllable is clearly audible due to its last letter ‘x’ that incorporates the two sounds ‘ks’ and, emphasis is put on the fact that, the signs have an identical sound at their beginnings.

Consequently, overall, the signs are aurally similar to below 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 of the earlier marks

 

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 trade marks are extremely well-known in connection with ‘online comparison portal ‘verivox.de’ in particular in the fields of telecommunication, energy and insurance services in Germany’ (p.4 of opponent’s observations submitted on 09/06/2020). This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

 

The evidence consists of the following documents:

Enclosures 1 and 1a and 2: Screenshots from Wikipedia with an entry ‘Verivox’ in German and sections translated into English (dated 2020), in which the opponent’s company is indicated as a German business providing tariff comparison services in a wide range of fields such as telecommunication, energy, gas, insurance, banking products, vehicles and real estate. Moreover, following the translation provided – the company has been awarded with various recognitions between 2009 and 2018, all related to tariff comparison services for general public. According to the extracts, the opponent’s turnover for 2014 was EUR 82 million and for 2017 – EUR 127 million. The opponent has also attached a version of the above page with a warning pointing out that the source was lastly modified in 2015.

Enclosure 3: Extracts from the opponent’s website www.verivox.de in German, where some listings of recognitions/certification may be also seen (especially dated between 2017-2020). Within its observation, the opponent pays attention to some of these awards and rankings that its company has received through the years, providing partial translations, e.g. by the external review platform eKomi, Audience Prize Voting, ‘Price Champion 2019’ of Die Welt, Testbild magazine and the Statista statistic portal. However, apart from referring to these in its observations and listing them on its website/Wikipedia dedicated page, the opponent does not provide any further materials produced by these third parties that will serve to put these references into context.

Enclosures 4 and 5: Consolidated financial reports and statements of the opponent’s company for 2017 and 2018, in German. Even though the entire documents are not translated, the opponent provides partial translation highlighting the relevant sections thereof, e.g. increase of turnovers over the years, 83% aided brand awareness in 2018, revenue figures for 2016-2018 in a self-produced table.

Enclosure 6: A marketing report (in English), entitled ‘Brand tracking 01/20’, in which the opponent’s brand is compared to a third party’ brand operating in the same commercial sector, in particular in relation to degree of brand awareness, ad awareness, usage intention, on the basis of 1000 respondents. The results of the report show that the opponent’s is strongly associated with electricity. The findings relate mainly to 2020 and are compared to findings in 2019. It is evident from the report, that its purpose is rather internal and it is represents a self-produced report by the opponent’s company. Overall, the survey lacks very essential indications that will be discussed in detail below and its probative character has to be seen in the context of the remaining pieces of evidence.

In addition to the extracts submitted, the opponent also refers to its Facebook presence with over 29.000 likes and over 3400 Twitter followers and over 1900 Instagram followers. However, it submits no extracts to support this claim.

 

Having examined the materials listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through use. In general, the opponent failed to provide sufficient indications on the extent of the recognition of the relevant public that is confirmed by information from independent sources.

Account is taken of the fact that the evidence should be assessed as a whole, that is, each indication should be weighed up against the others, with information confirmed by more than one source generally being considered more reliable than facts derived from isolated references. Indeed, the more independent, reliable and well-informed the source of the information is, the higher the probative value of the evidence will be.

The evidence submitted consists predominantly of extracts or documents originating from the opponent, in particular the extracts from the opponent’s website, its annual financial reports, albeit these as audited documents have an official character, and the marketing survey performed by the opponent’s company, e.g. by the opponent’s marketing team. In that sense, the opponent submitted no information deriving from third parties that can serve as conclusive evidence of its own claims and materials provided. In general, information derived from the interested party has to be seen in the light of the remaining evidence and is mostly not convincing on its own to lead to the conclusion of reputation. To that extent, the extracts submitted from Wikipedia, despite containing some relevant information, cannot be seen as sufficiently reliable information due to the publicly editable character of that Internet source. Indeed, the opponent did not prove or guarantee that it has no relation to the creation and maintenance of the entry on Wikipedia before 2015 when it was lastly updated.

Moreover, it is to be noted that even though surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark and its market share, their probative value will be dependent on whether they correspond to the Office requirements – in particularly the degree of independence of the entity conducting them, the accuracy of the information and the reliability of the method applied. In the present case, the report presented (Enclosure 6) evidently forms part of internal researches of the opponent’s business and has no official character, e.g. report commissioned to an independent marketing services provider (see a reference at 27/03/2014, R 540/2013-2, Shape of a bottle (3D), § 49). Moreover, it does not encompass all the necessary requisites such as a representative sample of interviewees (nationality, sex, age, occupation and background), method and circumstances under which the survey was carried out and complete list of questions included in the questionnaire in the correct order of asking, interpretation of the percentages reflected on the overall scale. Consequently, given that the above deficiencies cast considerable doubt on the reliability and the independent nature of the survey, in spite of its references to market recognition, it fails to provide the Opposition Division with all the necessary information for substantive conclusion to be drawn out of it.

As to the quality certification and awards mentioned, these are usually granted by authorities and media, however, again, the opponent failed to indicate what objective standards it met in order to receive these awards. In that sense, prizes and awards offered by unknown entities, or on the basis of unspecified or subjective criteria, should be given very little weight. By way of example, the opponent could have provided references and extracts from publicly available publications originating from third parties where the announcement of the awards was discussed independently from the opponent’s webpage.

Finally, while the evidence is in principle required to support forming a conclusion on whether the earlier marks enjoyed any enhanced distinctiveness/reputation before the filing date of the contested sign, that is 05/09/2019, Enclosures 1, 2 and 6 are dated in 2020, that is to say, after the relevant period. Although such evidence cannot be completely ignored, it does not demonstrate that a reputation existed at the time of filing of the contested trade mark. Consequently, the only pieces of evidence dated within the relevant period are the financial reports and the opponent’s website extracts. These pieces of evidence, however, on its own do not suffice to put into marketing context the recognition of the opponent’s brand by its clients, e.g. by referring to sales/consumers opposed to other competitors in the same market field; consequently, no conclusions can be drawn on the market niche occupied by the opponent’s brand upon relying on these documents only.

  

Consequently, following the above, the opponent failed to provide sufficient information that would lead to the conclusion that its earlier rights enjoy any degree of enhanced distinctiveness. In such case, 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.

 

e) Global assessment, other arguments and conclusion

 

The services in question are partly identical, partly similar, including to a high degree, and partly dissimilar. They target the public at large and professional public as has been previously addressed. The earlier marks enjoy a normal degree of distinctiveness as a whole, as results from the analysis in section d) above.

In spite of the differences in the signs, as already discussed in the comparison above, the coinciding features outnumber the differences, thus, clearly leading to an overall similar impression. The part that the signs have in common amounts to five letters out of seven that constitute the entire contested sign. Moreover, even though the signs coincide in only one entire syllable, [vox], the coincidence in four audible sounds there will lead to somewhat similar sound of the verbal elements as well, also taking into account that they still coincide in the initial consonant [v] and the vowel [i]. Finally, neither of signs contains a clear and specific meaning for the public under assessment so that consumers are capable of grasping it immediately (see, for example, 12/01/2006, C-361/04 P, Picaro, EU:T:2004:189, § 20) and distinguishing between them based on that concept. 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).

Moreover, as seen, in the present case the services concerned relate to the same or neighboring market sectors (identical and similar, including highly similar, services). Consequently, given that 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), it cannot be excluded that confusion may occur.

Indeed, 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).

 

Finally, the applicant refers to previous decisions of the Office to support its arguments, in particular to the following:

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 referred to by the applicant are not relevant to the present proceedings since most of them concern a different set of circumstances differing from the ones of the case at hand. In particular, several of the conflicting signs obviously differ in their beginnings or the differing letters are rather noticeable and may serve to convey an overall concept. Moreover, these cases in total do not serve the Opposition Division to see a standard Office practice in that respect. Consequently, as previously noted, albeit the applicant’s right to be heard and to refer to similar examples cannot be neglected, the Opposition Division sees no pattern provided by these cases that it should follow in the present case. Each case has to be dealt with by its own merits and in the above assessment the Opposition Division clearly pointed out that the similarities in the present case suffice for likelihood of confusion to cannot be completely ruled out.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Slavic-speaking part of the public such as the Bulgarian and Polish consumers and therefore the opposition is partly well founded on the basis of the opponent’s European Union 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 from the above that the contested trade mark must be rejected for the  services found to be identical or similar, including to high degree, to those of the earlier trade marks.

 

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.

 

 

REPUTATION — ARTICLE 8(5) EUTMR

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 

 The signs must be either identical or similar.

 

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

 

a) Reputation of the earlier trade mark EUTM No 15 556 079

 

The evidence submitted by the opponent to prove the reputation and highly distinctive character of its earlier marks, and in particular to earlier trade mark EUTM No 15 556 079, has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

 

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark/s acquired an enhanced distinctiveness, let alone any degree of reputation. The reasoning thereof has already been provided in the previous section, where a full analysis of the pieces of evidence concerned and their weight in the assessment has been made. Following the above, the evidence does not suffice to show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark/s has/have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark/s has/have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

 

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

Anna ZIÓŁKOWSKA

Manuela RUSEVA

Vít MAHELKA

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.