3b | Decision 2625344

Date Published: Sep 25, 2017

OPPOSITION No B 2 625 344

O2 Worldwide Limited, 20 Air Street, London  W1B 5AN, United Kingdom, (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge  CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

O3b Limited, 3rd Floor Anley House, Anley Street, St Helier  2 3QE, Jersey (applicant) represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, Manchester  M3 2JA, United Kingdom (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 625 344 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 525 653 . The opposition is based on the following earlier marks and grounds:

Marks invoked under Article 8(1)(b) EUTMR

• EUTM No 9 462 268 for the word mark ‘O3’, registered for services in Classes 35, 36, 37, 39, 42, 43, 44 and 45.
• EUTM No 9 463 381 for the figurative mark registered for services in Classes 35, 36, 37, 39, 43, 44 and 45.
• EUTM No 6 691 463 for the figurative mark registered for goods and services in Classes 9 and 42.

Marks invoked under Article 8(1)(b) and Article 8(5) EUTMR for which reputation was claimed in Germany, Czech Republic, European Union, United Kingdom, Ireland and Slovakia for goods and services in Classes 9, 38 and 41.

EUTM No 13 108 139 for the figurative mark , registered for goods and services in Classes 9, 35, 36, 38, 41 and 42.

Marks invoked under Article 8(1)(b) and Article 8(5) EUTMR for which reputation was claimed in United Kingdom

UK trade mark No 2 296 255 for the figurative mark  registered for goods and services in Classes 9 and 38.

UK trade mark No 2 560 871 for the word mark ‘O2’ registered for goods and services in Classes 9, 38, 41 and 42 and for which reputation was claimed except for Class 42.

UK trade mark No 2 640 231 for the figurative mark  registered for goods and services in Classes 9, 36, 38 and 41 and for which reputation was claimed except for Class 36.

1. CEASING OF EXISTENCE -  EUTMs No 9 462 268 and No 9 463 381

According to Article 41(1)(a) EUTMR, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

1. by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

[…].

According to Article 8(2) EUTMR, ‘earlier trade marks’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking into account, where appropriate, of the priorities claimed in respect of those marks, Article 8(2)(a) EUTMR;

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trade marks which are well known in a Member State.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

Further to a revocation action, EUTM No 9 462 268 and EUTM No 9 463 381 were revoked in their entirety as from 10/05/2016.

As it is apparent from the above, the earlier marks have ceased to exist and thus cannot constitute a valid trade mark on which the opposition can be based within the meaning of Article 41(1)(a) EUTMR and Article 8(2) EUTMR.  

Therefore, the present opposition does not have a legal basis and, accordingly, does not comply with the requirements of the above mentioned legal provisions.

In its submissions of 16/03/2017, the opponent claims that even though these earlier marks were revoked on 10/05/2016, they are still valid earlier rights, since at the time of filing the opposition, 16/12/2015, they were in existence. However, if, in the course of the proceedings, an earlier right ceases to exist, as in the present case, the final decision cannot be based on it. The opposition may only be upheld with respect to an

earlier right that is valid at the moment when the decision is taken. The reason why  the earlier right ceases to have effect does not matter.

Since the EUTM application and the earlier right that has
ceased to have effect cannot coexist anymore, the opposition cannot be upheld to this extent. Such a decision would be unlawful (judgment of 13/09/2006, T-191/04, Metro, EU:T:2006:254, § 33-36). Consequently the opponent’s claims in this regard are unfounded.

The opposition must therefore be rejected as unfounded as far as it is based on these earlier marks.

2. REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the opposition will proceed on the basis of EUTM No 13 108 139 for the figurative mark which claimed reputation in Germany, Czech Republic, European Union, United Kingdom, Ireland, Slovakia for goods and services in Classes 9, 38 and 41.

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 of 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: the 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.

The applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Germany, Czech Republic, European Union, United Kingdom, Ireland, Slovakia for goods and services in Classes 9, 38 and 41.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 03/09/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the aforementioned territories prior to that date. The evidence must also show that the reputation was acquired for the goods and services  for which the opponent has claimed reputation, namely:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; abacuses; accounting machines; accumulators, electric; acid hydrometers; acidimeters for batteries; acoustic conduits; acoustic couplers; actinometers; adding machines; aerials; aerometers; agendas (electronic -); air analysis apparatus; alarm bells, electric; alarms; alcoholmeters; alidades; altimeters; ammeters; amplifiers; amplifying tubes; anemometers; animated cartoons; anode batteries; anodes; answering machines; anti-glare glasses; anti-glare visors; anti-interference devices [electricity]; anti-theft warning apparatus; anticathodes; apertometers [optics]; armatures [electricity]; asbestos clothing for protection against fire; asbestos gloves for protection against accidents; asbestos screens for firemen; astronomy (apparatus and instruments for -); audiovisual teaching apparatus; automated teller machines [atm]; azimuth instruments; balances [steelyards]; balancing apparatus; bar code readers; barometers; batteries, electric; batteries, electric, for vehicles; batteries for lighting; battery boxes; battery chargers; battery jars; beacons, luminous; bells [warning devices]; betatrons; binoculars; blinkers [signalling lights]; blueprint apparatus; boiler control instruments; branch boxes [electricity]; breathing apparatus, except for artificial respiration; breathing apparatus for underwater swimming; buzzers; cabinets for loudspeakers; cables, electric; calculating disks; calculating machines; calibrating rings; calipers; camcorders; cameras [photography]; capacitors; capillary tubes; carpenters' rules; carriers for dark plates [photography]; cases especially made for photographic apparatus and instruments; cases fitted with dissecting instruments [microscopy]; cash registers; cassette players; cathodes; cathodic anti-corrosion apparatus; cell phone straps; centering apparatus for photographic transparencies; central processing units [processors]; chargers for electric batteries; chemistry apparatus and instruments; chips [integrated circuits]; choking coils [impedance]; chromatography apparatus for laboratory use; chronographs [time recording apparatus]; cinematographic cameras; cinematographic film, exposed; circuit breakers; circuit closers; cleaning apparatus for phonograph records; clinometers; clothing especially made for laboratories; clothing for protection against accidents, irradiation and fire; clothing for protection against fire; coaxial cables; coils, electric; coin-operated apparatus (mechanisms for -); coin-operated mechanisms for television sets; collectors, electric; commutation (electric apparatus for -); commutators; compact disc players; compact discs [audio-video]; compact discs [read-only memory]; comparators; compasses (directional -); compasses [measuring instruments]; computer game programs; computer keyboards; computer memory devices; computer operating programs, recorded; computer peripheral devices; computer programmes [programs], recorded; computer programs [downloadable software]; computer software, recorded; computers; conductors, electric; connections for electric lines; connectors [electricity]; contact lenses; contacts, electric; containers for contact lenses; containers for microscope slides; control panels [electricity]; converters, electric; copper wire, insulated; correcting lenses [optics]; cosmographic instruments; counter-operated apparatus (mechanisms for -); couplers [data processing equipment]; couplings, electric; covers for electric outlets; crash test dummies; cupels [laboratory]; current rectifiers; cyclotrons; darkroom lamps [photography]; darkrooms [photography]; data processing apparatus; decompression chambers; demagnetizing apparatus for magnetic tapes; densimeters; densitometers; detectors; diagnostic apparatus, not for medical purposes; diaphragms [acoustics]; diaphragms for scientific apparatus; diaphragms [photography]; dictating machines; diffraction apparatus [microscopy]; discharge tubes, electric, other than for lighting; disk drives for computers; disks, magnetic; distance measuring apparatus; distance recording apparatus; distillation apparatus for scientific purposes; distribution boards [electricity]; distribution boxes [electricity]; distribution consoles [electricity]; divers' masks; diving suits; dna chips; dog whistles; dosimeters; downloadable image files; downloadable music files; downloadable ring tones for mobile phones; drainers for use in photography; dressmakers' measures; drying apparatus for photographic prints; drying racks [photography]; ducts [electricity]; dvd players; dynamometers; ear plugs for divers; editing appliances for cinematographic films; egg-candlers; electric door bells; electric installations for the remote control of industrial operations; electric loss indicators; electricity conduits; electricity mains (materials for -) [wires, cables]; electrified fences; electrified rails for mounting spot lights; electro-dynamic apparatus for the remote control of railway points; electro-dynamic apparatus for the remote control of signals; electrolysers; electromagnetic coils; electronic notice boards; electronic pens [visual display units]; electronic pocket translators; electronic publications, downloadable; electronic tags for goods; encoded identification bracelets, magnetic; encoded magnetic cards; enlarging apparatus [photography]; epidiascopes; ergometers; exposure meters [light meters]; extinguishers; eyeglass cases; eyeglass chains; eyeglass cords; eyeglass frames; eyepieces; eyepieces (instruments containing -); facsimile machines; false coin detectors; fermentation (apparatus for -) [laboratory apparatus]; fibre [fiber (am)] optic cables; film cutting apparatus; films, exposed; filters for respiratory masks; filters for ultraviolet rays, for photography; filters [photography]; fire alarms; fire beaters; fire blankets; fire boats; fire engines; fire escapes; fire hose; fire hose nozzles; flash-bulbs [photography]; flashlights [photography]; floppy disks; fluorescent screens; fog signals, non-explosive; food analysis apparatus; frames for photographic transparencies; franking (apparatus to check -); frequency meters; furniture especially made for laboratories; fuse wire; fuses; galena crystals [detectors]; galvanic batteries; galvanic cells; galvanometers; garments for protection against fire; gas testing instruments; gasometers [measuring instruments]; gauges; glass covered with an electrical conductor; glazing apparatus for photographic prints; global positioning system [gps] apparatus; gloves for divers; gloves for protection against accidents; gloves for protection against x-rays for industrial purposes; goggles for sports; grids for batteries; hands free kits for phones; head cleaning tapes [recording]; headphones; heat regulating apparatus; heliographic apparatus; hemline markers; high-frequency apparatus; holders for electric coils; holograms; horns for loudspeakers; hourglasses; hydrometers; hygrometers; identification sheaths for electric wires; identification threads for electric wires; identity cards, magnetic; igniting apparatus, electric, for igniting at a distance; incubators for bacteria culture; inductors [electricity]; integrated circuit cards [smart cards]; integrated circuits; intercommunication apparatus; interfaces for computers; inverters [electricity]; invoicing machines; ionization apparatus not for the treatment of air or water; jigs [measuring instruments]; juke boxes for computers; juke boxes, musical; junction boxes [electricity]; junction sleeves for electric cables; knee-pads for workers; laboratory centrifuges; laboratory trays; lactodensimeters; lactometers; laptop computers; lasers, not for medical purposes; leather (appliances for measuring the thickness of -); lens hoods; lenses for astrophotography; letter scales; levelling instruments; levels [instruments for determining the horizontal]; life belts; life buoys; life jackets; life nets; life saving apparatus and equipment; life-saving rafts; light conducting filaments [optical fibers fibres]; light dimmers [regulators], electric; light-emitting diodes [led]; light-emitting electronic pointers; lighting ballasts; lightning arresters; limiters [electricity]; locks, electric; logs [measuring instruments]; loudspeakers; magic lanterns; magnetic data media; magnetic encoders; magnetic tape units for computers; magnetic tapes; magnetic wires; magnets; magnets (decorative -); magnifying glasses [optics]; manometers; marine compasses; marine depth finders; marking buoys; marking gauges [joinery]; masts for wireless aerials; material testing instruments and machines; mathematical instruments; measures; measuring apparatus; measuring devices, electric; measuring glassware; measuring instruments; measuring spoons; mechanical signs; megaphones; mercury levels; metal detectors for industrial or military purposes; meteorological balloons; meteorological instruments; meters; metronomes; micrometer screws for optical instruments; micrometers; microphones; microprocessors; microscopes; microtomes; milage recorders for vehicles; mirrors for inspecting work; mirrors [optics]; modems; money counting and sorting machines; monitoring apparatus, electric; monitors [computer hardware]; monitors [computer programs]; motor fire engines; mouse [data processing equipment]; mouse pads; nautical apparatus and instruments; naval signalling apparatus; navigation apparatus for vehicles [on-board computers]; navigational instruments; neon signs; nets for protection against accidents; nose clips for divers and swimmers; notebook computers; objectives [lenses] optics; observation instruments; octants; ohmmeters; optical apparatus and instruments; optical character readers; optical condensers; optical data media; optical discs; optical glass; optical goods; optical lamps; optical lenses; oscillographs; ovens for laboratory use; oxygen transvasing apparatus; ozonisers [ozonators]; parking meters; particle accelerators; pedometers; peepholes [magnifying lenses] for doors; periscopes; personal stereos; petrol gauges; phonograph records; photocopiers [photographic, electrostatic, thermic]; photometers; phototelegraphy apparatus; photovoltaic cells; physics (apparatus and instruments for -); pince-nez; pipettes; plane tables [surveying instruments]; planimeters; plates for batteries; plotters; plugs, sockets and other contacts [electric connections]; plumb bobs; plumb lines; pocket calculators; polarimeters; portable media players; portable telephones; precision balances; precision measuring apparatus; pressure indicator plugs for valves; pressure indicators; pressure measuring apparatus; printed circuit boards; printed circuits; prisms [optics]; probes for scientific purposes; projection apparatus; projection screens; protection devices against x-rays, not for medical purposes; protection devices for personal use against accidents; protective helmets; protective helmets for sports; protective masks; protective suits for aviators; protractors [measuring instruments]; punched card machines for offices; push buttons for bells; pyrometers; quantity indicators; radar apparatus; radio pagers; radiological apparatus for industrial purposes; radiology screens for industrial purposes; radios; radiotelegraphy sets; radiotelephony sets; railway traffic safety appliances; readers [data processing equipment]; receivers (audio-- and video- -); record player needles (apparatus for changing -); record players; reducers [electricity]; reflecting discs for wear, for the prevention of traffic accidents; refractometers; refractors; regulating apparatus, electric; relays, electric; remote control apparatus; resistances, electric; respirators for filtering air; respirators, other than for artificial respiration; resuscitation mannequins [teaching apparatus]; retorts; retorts' stands; revolution counters; rheostats; riding helmets; road signs, luminous or mechanical; rods for water diviners; rods [surveying instruments]; rulers [measuring instruments]; rules [measuring instruments]; saccharometers; safety restraints, other than for vehicle seats and sports equipment; safety tarpaulins; salinometers; satellite navigational apparatus; satellites for scientific purposes; scales; scanners [data processing equipment]; screens for photoengraving; screens [photography]; screw-tapping gauges; semi-conductors; sextants; sheaths for electric cables; shoes for protection against accidents, irradiation and fire; shutter releases [photography]; shutters [photography]; sighting telescopes for firearms; signal bells; signal lanterns; signalling buoys; signalling panels, luminous or mechanical; signalling whistles; signals, luminous or mechanical; signs, luminous; simulators for the steering and control of vehicles; sirens; skins (apparatus for measuring the thickness of -); slide calipers; slide projectors; slide-rules; slides [photography]; smoke detectors; socks, electrically heated; solar batteries; solderers' helmets; solenoid valves [electromagnetic switches]; sonars; sound alarms; sound locating instruments; sound recording apparatus; sound recording carriers; sound recording strips; sound reproduction apparatus; sound transmitting apparatus; sounding apparatus and machines; sounding leads; sounding lines; spark-guards; speaking tubes; spectacle cases; spectacle frames; spectacle glasses; spectacles [optics]; spectrograph apparatus; spectroscopes; speed checking apparatus for vehicles; speed indicators; speed measuring apparatus [photography]; speed regulators for record players; spherometers; spirit levels; spools [photography]; sprinkler systems for fire protection; stage lighting regulators; stands for photographic apparatus; starter cables for motors; steering apparatus, automatic, for vehicles; step-up transformers; stereoscopes; stereoscopic apparatus; stills for laboratory experiments; styli for record players; sulphitometers; sunglasses; surveying apparatus and instruments; surveying chains; surveying instruments; surveyors' levels; switchboards; switchboxes [electricity]; switches, electric; tachometers; tape recorders; taximeters; teaching apparatus; teeth protectors; telegraph wires; telegraphs [apparatus]; telemeters; telephone apparatus; telephone receivers; telephone transmitters; telephone wires; teleprompters; telerupters; telescopes; television apparatus; temperature indicators; terminals [electricity]; test tubes; testing apparatus not for medical purposes; theft prevention installations, electric; theodolites; thermionic tubes; thermometers, not for medical purposes; thermostats; thermostats for vehicles; ticket dispensers; time clocks [time recording devices]; time recording apparatus; time switches, automatic; tires (automatic indicators of low pressure in vehicle -); tone arms for record players; totalizators; traffic-light apparatus [signalling devices]; transformers [electricity]; transistors [electronic]; transmitters of electronic signals; transmitters [telecommunication]; transmitting sets [telecommunication]; transponders; triodes; tripods for cameras; urinometers; usb flash drives; vacuum gauges; vacuum tubes [radio]; variometers; vehicle breakdown warning triangles; vehicle radios; verniers; vests (am) bullet-proof -; video cassettes; video game cartridges; video recorders; video screens; video telephones; videotapes; viewfinders, photographic; viscosimeters; voltage regulators for vehicles; voltage surge protectors; voltmeters; voting machines; wafers [silicon slices]; waling glasses; walkie-talkies; washing trays [photography]; water level indicators; wavemeters; weighbridges; weighing apparatus and instruments; weighing machines; weights; whistle alarms; wind socks for indicating wind direction; wire connectors [electricity]; wires, electric; word processors; workmen's protective face-shields; wrist rests for use with computers; X-ray apparatus not for medical purposes; X-ray films, exposed; X-ray photographs, other than for medical purposes; X-ray tubes not for medical purposes; X-rays producing apparatus and installations, not for medical purposes; apparatus for the transmission of sound and image; telecommunications apparatus; mobile telecommunication apparatus; mobile telecommunications handsets; computer hardware; computer application software; apps; computer software downloadable from the Internet; recorded computer software; software applications; mobile software applications, downloadable applications for multimedia devices; computer games; computer game software; computer games programs; PDAs (Personal Digital Assistants); pocket PCs; mobile telephones; telecommunications network apparatus; drivers software for telecommunications networks and for telecommunications apparatus; protective clothing; televisions; global positioning system [GPS] apparatus; satellite navigation devices; computer software recorded onto CD Rom; SD-Cards (secure digital cards); glasses; protective glasses and cases therefor; cameras; camera lenses; MP3 players; audio tapes, audio cassettes; audio discs; audio-video tapes; audio-video cassettes; audio-video discs; video tapes; video discs; CDs, DVDs; downloadable electronic publications; mouse mats; mobile telephone covers; mobile telephone cases; magnetic cards; encoded cards; mobile phone application software; software for telecommunication; software for the processing of financial transactions; parts and fittings for all the aforesaid goods.

Class 38: Telecommunications; cable television broadcasting; cellular telephone communication; communications by computer terminals; communications by fiber [fibre] optic networks; communications by telegrams; communications by telephone; computer aided transmission of messages and images; electronic bulletin board services [telecommunications services]; electronic mail; facsimile transmission; information about telecommunication; message sending; paging services [radio, telephone or other means of electronic communication]; providing access to databases; providing internet chatrooms; providing telecommunication channels for teleshopping services; providing telecommunications connections to a global computer network; providing user access to global computer networks; radio broadcasting; rental of access time to global computer networks; rental of facsimile apparatus; rental of message sending apparatus; rental of modems; rental of telecommunication equipment; rental of telephones; satellite transmission; telecommunications routing and junction services; teleconferencing services; telegraph services; telephone services; television broadcasting; telex services; transmission of digital files; transmission of greeting cards online; transmission of telegrams; voice mail services; wire service; wireless broadcasting; telecommunications services; mobile telecommunications services; telecommunications portal services; Internet portal services; mobile telecommunications network services; fixed line telecommunication services; provision of broadband telecommunications access; broadband services; broadcasting services; television broadcasting services; broadcasting services relating to Internet protocol TV; provision of access to Internet protocol TV; Internet access services; email and text messaging services; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; communications services for accessing a database; leasing of access time to a computer database; providing access to computer databases; rental of access time to a computer database; operation of a network, being telecommunication services; providing electronic bulletin board services; providing access to weblogs; providing access to podcasts; chatroom services for social networking; providing online forums; forums for social networking; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; Academies [education]; Amusement parks; Amusements; Animal training; Arranging and conducting of colloquiums; Arranging and conducting of concerts; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops [training]; Arranging of beauty contests; Boarding schools; Booking of seats for shows; Bookmobile services; Calligraphy services; Casino facilities [gambling] (Providing -); Cinema presentations; Circuses; Club services [entertainment or education]; Coaching [training]; Conducting fitness classes; Correspondence courses; Disc jockey services; Discotheque services; Dubbing; Education information; Educational examination; Electronic desktop publishing; Entertainer services; Entertainment information; Fashion shows for entertainment purposes (Organization of -); Film production, other than advertising films; Gambling; Game services provided on-line from a computer network; Games equipment rental; Golf facilities (Providing -); Gymnastic instruction; Health club services [health and fitness training]; Holiday camp services [entertainment]; Language interpreter services; Layout services, other than for advertising purposes; Lending libraries; Live performances (Presentation of -); Microfilming; Modelling for artists; Movie studios; Museum facilities (Providing -) [presentation, exhibitions]; Music composition services; Music-halls; News reporters services; Night clubs; Nursery schools; Operating lotteries; Orchestra services; Organization of balls; Organization of competitions [education or entertainment]; Organization of exhibitions for cultural or educational purposes; Organization of shows [impresario services]; Organization of sports competitions; Party planning [entertainment]; Personal trainer services [fitness training]; Photographic reporting; Photography; Physical education; Practical training [demonstration]; Production of music; Production of radio and television programmes; Production of shows; Providing amusement arcade services; Providing karaoke services; Providing on-line electronic publications, not downloadable; Providing sports facilities; Publication of books; Publication of electronic books and journals on-line; Publication of texts, other than publicity texts; Radio entertainment; Recording studio services; Recreation facilities (Providing -); Recreation information; Religious education; Rental of audio equipment; Rental of camcorders; Rental of cine-films; Rental of lighting apparatus for theatrical sets or television studios; Rental of movie projectors and accessories; Rental of radio and television sets; Rental of show scenery; Rental of skin diving equipment; Rental of sound recordings; Rental of sports equipment, except vehicles; Rental of sports grounds; Rental of stadium facilities; Rental of stage scenery; Rental of tennis courts; Rental of video cassette recorders; Rental of videotapes; Scriptwriting services; Sign language interpretation; Sport camp services; Subtitling; Television entertainment; Theatre productions; Ticket agency services [entertainment]; Timing of sports events; Toy rental; Translation; Tuition; Videotape editing; Videotape film production; Videotaping; Vocational guidance [education or training advice]; Vocational retraining; Writing of texts, other than publicity texts; Zoological garden services; interactive entertainment services; electronic games services provided by means of any communications network; entertainment services provided by means of telecommunication networks; information services relating to education, training, entertainment, sporting and cultural activities provided by means of telecommunication networks; provision of news information; television production services; television programming services; television production and television programming services provided by means of Internet protocol technology; provision of musical events; entertainment club services; discotheque services; presentation of live performances; night clubs; rental of music venues and stadiums; casino services; ticket reservations for entertainment, sporting and cultural events; ticket information services for entertainment, sporting and cultural events; ticket agency services for entertainment, sporting and cultural events; provision of on-line computer games; rental of computer games programs; computer amusement services; provision of information, news and commentary in the field of computer games; arranging, organising and conducting computer game competitions; publishing services; providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; arranging, organising and conducting of competitions, games and quizzes; arranging, organising and conducting of competitions, games and quizzes for entertainment, recreational, cultural and educational purposes; organisation of awards; conducting of phone-in competitions; issuing of tickets for entertainment, sporting and cultural events; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network. -);

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

Between 16/06/2016 and 04/07/2017 (within the prescribed time limit) the opponent submitted the following evidence:

• Witness statement by Peter Holmes, Director of Brand, a subsidiary of the opponent company.

Mr Holmes sets out the history of the company and its success starting in 2002 in the United Kingdom, through to its purchase by a Spanish telecommunications company (Telefónica S.A) in 2006. As from 2014 parts of the company were sold off but they continue to be licensed to use the brand in question. A huge number of press releases are referred to stretching from 2002 to 2014. Given the extensive nature of the material provided, Mr Holmes highlights several important events such as the implementation of the first wireless email solution (in 2001); the huge growth of its client base, up to 17.24 million UK customers as at 31/12/2001 and a combined revenue of GBP 3.2 billion by the end of the financial year (31/02/2001). At the end of December 2013, the total customer base reached approximately 60 million throughout Europe and Service Revenue was approximately EUR 14.1 billion. Figures concerning the brand’s active mobile customer base for 2002-2014 are also referred to as well as thorough details on annual advertising expenditure. Reference is made to agreements with high profile IT companies in order to market and distribute mobile data services as well as a report (04/03/2002) that the opponent will supply and maintain a “state of the art” digital radio service to the Ministry of Defence which will become the “de-facto” military standard to secure UK mainland radio communications; development of new messaging and interactive services with Arsenal FC and Big Brother 3; the opponent was the UK market leader for SMS; further information corresponding to increases in client base and revenue; high profile sponsorship of company of ‘Big Brother’ which resulted in the handling of 6.6 million text messages. In this respect, mention is made of the average audience (fifth week of the series) of 5.2 million viewers which resulted in 26% of the available audience. There are also details and exhibits concerning awareness studies such as that conducted by Millward Brown in 2002-2004 and again in 2013-2014 the latter demonstrating over 30% advertising and brand awareness.

The witness statement is fully backed up by press releases and articles from a variety of different sources. Also, several awards that have been won are mentioned and in the exhibits it can be seen that in 2003-2004 the “O2” brand was awarded the “Business Superbrand” award. Indeed, the publication “Business Superbrands” lists the 60 strongest business to business brands on an annual basis. In 2004, it was awarded the “Superbrands Award”, in 2004 the “Cool Brand Leader”. In 2004, it won the Institute of Practitioners in Advertising Award, an award supported by the Financial Times amongst others and mentioned as the “most prestigious advertising award a brand can win”. The publication mentions, with reference to a NOP survey, “One of O2’s most impressive achievements has been how rapidly it has established itself in the market…” Further awards include the “Marketing Initiative of the Year Award” in November 2003 at The Utility Industry Achievement Award and the award for “Advertiser of the Year” awarded by the National Business Award, also in November 2003. “Best Network of the Decade” in October 2004 for showing the most innovation in encouraging the uptake of mobile data over the last ten years and again in November 2004 at the IPA Advertising Effectiveness Awards the Blue Ribband Grand Prix plus an additional Gold Award, acknowledging the company as having run the UK’s most successful advertising campaigns for the preceding two years. A number of other awards are mentioned in 2006 and 2007 for very similar feats.  Whilst in 2008 the “O2” (arena) won “Venue of the Year” at the Music Week Awards 2008. Together with its partner (AEG Europe) it won “Music and Brand Partnership of the Year” category. The awards continue in the same vein until the relevant period, for example in 2015 the brand received awards for best website of the year, marketing society brand of the year and was granted ‘Britain’s Most Admired Companies’.  Also mentioned in the statement and attached in the exhibits is Millward Brown Optimor’s BrandZ Top 100, a ranking which identifies the world’s most valuable brands measured by their dollar value. The company occupies the 77th spot on the 2009 list with a value of USD 8 601 000 000 and is considered the 4th most valuable brand in the UK (after Vodafone, Tesco and HSBC). By 2010 “O2” occupied the 70th spot with a 23% increase in Brand Value and also ranked 14th in the Top 20 Risers Section.

Also of interest is the sponsorship of music festivals and events such as the “O2 Wireless Music Festival” in Hyde Park, London (more than 30  000 visitors a day): The “O2 party in the Park 2005” which took place in at least five major cities in the UK over a period of three months. Numerous other such events are referred to as well as “The Brits” which is the most prestigious music awards ceremony in the UK. In this regard the venue “The O2” is referred to with a 23 000 capacity arena, live music club, theatre, flexible exhibition space, deluxe multi-screen cinema, restaurants, cafés, bars and a proposed London regional casino. This musical and entertainment content is then brought exclusively to the “O2” phones and devices and indeed customers enjoy certain privileges such as first chance to book tickets. Reference is also made to The David Beckham Academy which is one of the first parts of a development project managed by its partner AEG which aims to transform the area into an entire entertainment and sporting destination. Further to this there are eleven music venues across the UK (several places in London, Birmingham, Bristol, Glasgow, Liverpool, Newcastle, Oxford, Sheffield and Leeds) which until 2013 (at least) have been re-branded as “O2 Academy” in order to promote music. Adverts from O2’s wireless festival, information concerning the O2 arena where a range of concerts are held and also where the finals of the Olympic gymnastic and basketball finals will be held.  Extremely successful groups and artists (AHA, Depeche Mode, Michael Jackson) are mentioned as having performed there and information goes back to its opening and through to 14/04/2009. Mention is also made of heavy sponsorship with the England Rugby Team.

The statement also refers to decisions from other IP Offices as well as the EUIPO which support the opponent’s assertions on the repute of its brand.  

Nearly identical submissions as concerns Germany, Ireland, the Czech Republic and Slovakia are made and all the exhibits (PH1-PH2SK) fully support the claims and assertions made in the witness statement. To given an idea of the content of the press release and articles that cover 2003-2015 they refer to the brand as ‘the top text messaging provider’ that has provided a range of interactive mobile services for “Pop Idol” (popular reality show); a new mobile video service in the UK enabling customers to download and stream video content, Partnerships with top music providers, record labels in order to enable consumers to download a variety of music are also mentioned. References to independently audited figures (25/11/2003) show that the company has the best ever UK mobile call success rate, beating all figures previously published by Oftel (an independent regulator and competition authority for the UK communications industries, with responsibilities across television, radio, telecommunications and wireless media).

• Dated 26/05/2004, a press release announced the partnership of the company with the English National Opera regarding the first ever live opera concert. Further partnerships with sports bodies are mentioned as well as the opponent being selected by the National Lottery operator Camelot to provide the SMS messaging capability that will help users to play the lottery on their phones.

• Similarly in 2006 there is information concerning a partnership with BMW, new platforms for further interactive services and a contract awarded by the UK government which concerns the provision of fire and rescue services with a new secure and highly resilient digital radio system. 

• In 2007, there is information concerning the opponent’s intention to improve response times and enhance patient care for Welsh ambulance services, announcing that the Welsh Ambulance Service NHS trust has signed a contract worth GBP 32 million with the opponent for the provision of advanced, secure digital communications. There is also information concerning the “O2 wireless festival”; a contract with AA (Automobile Association in the UK) until 2011; further information regarding broadband improvements; exclusive contract with Apple’s iPhone; launch of O2 WALLET which paves the way for the mass market use of mobile phones to pay for purchases or travel around London. Reference to the “best service” accolade is also made.

• 27/06/2008 a feature entitled “The O2 celebrates its first birthday” announcing the success of the venue.

• 2011-2014, a variety of press releases concerning O2 and its media services, sponsorship of the English rugby team and collaborations with musical artists, environmental sustainability plans, joint ventures with banks and other telecom operators.

Conclusion on reputation

The evidence is extensive but it is clear that the earlier trade mark has been subject to a long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources as annexed in the statement. The sales figures, marketing expenditure, outcomes of opinion polls and the number of awards going back to at least 2004 clearly show the success of the mark, of its continual growth and market presence as well as an innovative character that is constantly expanding and developing.

With regard to the goods and services for which repute has been claimed, it is plain from the evidence that the opponent has successfully proven that it has gained a reputation for all the telecommunications goods and services in Classes 9 and 38 and the opponent has filed voluminous documentation in this regard.

There is, however, an absence of any documentation concerning the remaining goods in Class 9. As to Class 41, there are indications that the reputation extends to entertainment services at least, as can be seen above. However, given that the telecommunications services in Class 38 are identical to those of the contested mark it is rather superfluous to enter into a more detailed assessment of the services in Class 41.

All in all, the evidence unequivocally shows that the earlier trade marks enjoy a high degree of recognition among the relevant public for these goods and services at least in the United Kingdom. The Opposition Division does not find it necessary to examine the remaining evidence which concerns the other territories for which reputation is claimed. This is due to the principle of economy of proceedings as well as considering that, according to the judgment of 06/10/2009, C 301/07, Pago, EU:C:2009:611, § 29 and 30, reputation in one Member State may suffice for the whole of the EU territory, taking into account both the size of the geographical area concerned, the proportion of the population and the goods and services at issue. The United Kingdom is an intensely populated territory, despite its geographical proportions, and indeed the evidence provided by the opponent demonstrates that the reputed goods and services protected by the mark are heavily used by a large proportion of consumers, thus it is held to constitute a substantial part of the territory. Consequently, as in ‘PAGO’ (cited above) and in view of the current circumstances, reputation in the United Kingdom is sufficient for the whole of the European Union.

2. The signs

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 earlier mark refers to the concept of a chemical formula, namely, oxygen in its stable form. This formula is commonly known throughout the world and as such the relevant public will be aware of this concept. As can be seen therefore, ‘O2’ is distinctive as there is no association with the goods and services for which reputation is claimed.

The contested mark may be perceived as a circular, rather abstract figurative device followed by the numeral ‘3’ and the lower case letter ‘b’ in white upon a black rectangular background. It is clear that in this scenario the signs would be considered as dissimilar overall due to the absence of any coincidences.

However, as argued by the opponent, it cannot be dismissed that some consumers may perceive the figurative circular device as a fanciful ‘O’, a character found in the earlier mark. Given that this represents the most advantageous scenario for the opponent, the Opposition Division will assess the signs from this perspective.

In the contested mark, the black rectangular background will be perceived as non-distinctive as it is a rather commonplace and banal element. However, no connection with the services can be found between any of the letters or numbers featured in the contested sign rendering them distinctive, as will become clear below.

Conceptually, following the arguments of the parties, the Opposition Division notes that ‘O3’ also refers to a chemical formula, but for ozone. However, whether or not this is perceived by all consumers is highly unlikely due to the fanciful representation of the ‘O’ and the fact that this particular formula is not as commonly known as ‘O2’. More importantly, the conjoined ‘b’ represents a clear, perceptible difference and there is no reason to believe that consumers would split the sign into ‘O3 b’ in the absence of any indications such as use of different fonts, colours, styles and so forth. Such a dissection would be artificial and does not comport with the normal manner in which consumers perceive signs since they see them as a whole and do not examine individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, 52). It is also relevant to note that consumers do not examine marks side by side, thus the perception of the contested mark cannot be tainted by ‘O2’ from the earlier mark.

Therefore, whilst the earlier mark conveys a clear concept, the contested mark does not relay any evident meaning as a whole, other than being understood as a combination of letters and numerals, thus there is an absence of any conceptual similarity.

Visually, the signs coincide in the shape of the first element but this is rather offset by the fanciful, abstract depiction in the contested mark which as a whole is markedly distinct. Moreover, considering the differences between the signs: the subscript ‘2’ in the earlier mark versus the ‘3b’ in the contested sign, styles and colouring of the letters/numerals as well as the non-distinctive black background, the overall impression is dissimilar, and sufficient to eclipse the slight similarity in the shape of the first element. Also to consider is that the signs are made up of two and three characters respectively. In such scenarios consumers can easily identify each single character. Therefore, in short words small differences may frequently lead to a different overall impression which is applicable here. As such the signs are visually dissimilar. 

Aurally and considering that the first element of the contested sign may be uttered as ‘O’ it would be referred to as ‘O-three-b’ whilst the earlier mark would be ‘O-two, in English for example, ‘O-tres-b’ versus ‘O-dos’ in Spanish, ‘O-trois-b’ versus ‘O-deux’ in French and so forth. In whatever language, the signs coincide in ‘O’ but differ in the remaining elements meaning their syllables also differ. Bearing in mind the previous assertion concerning the lengths of the signs, the signs only coincide in their first sound leading to only a very low degree of aural similarity.

As the signs have been found similar in one aspect of the comparison, the examination will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The contested mark seeks registration for a range of telecommunications services in Class 38 which are identical services to those for which the earlier mark is reputed. Further, the earlier mark is inherently distinctive in this regard.

Nonetheless, even considering these factors, the Opposition Division does not consider it plausible that the relevant public would link the signs due to the absence of any visual and conceptual similarities. The similarity between the signs is only on an aural level and is restricted to one common sound, ‘O’. As noted above, the degree of similarity between the conflicting marks is a relevant factor to establishing a link. The more similar the marks are,  the more likely it is that the later mark will bring the earlier reputed mark to the mind of the relevant public (judgment of 06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 26 and, by analogy, preliminary ruling of 27/11/, C-252/07, Intel, EU:C:2008:655, § 44).

Visually the signs cause a different overall impression, as examined previously and there is an absence of any conceptual similarity. These differences outweigh the very low degree of aural similarity and this premise follows settled case-law (see in this vein 20/06/2012, T-357/10, Corona, EU:T:2012:312, §30-34 and 49; 08/12/2011, T-586/10, Only Givenchy, EU:T:2011:722, § 65-66 (21/01/2010, T-309/08, G Stor, EU:T:2010:22, § 25-36).

Furthermore, another essential factor is that of likelihood of confusion. Indeed, the Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, §  22). The very low degree of aural similarity would not suffice even considering the principle of interdependence, whereby 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).

The opponent asserts that upon seeing the contested mark consumers would automatically think of the earlier mark. However, its line of reasoning is hinged on claims that do not hold true, such as the ‘O’ being highly distinctive and dominant and positioned in first place. Even if it is the first element in both signs, it is not the most distinctive or dominant nor is it featured independently. In fact, as reasoned in this decision the earlier mark is seen as a whole and is understood as the chemical formula for oxygen.  

The opponent’s reasoning relies on an artificial dissection of the signs and it is not conceivable that the public would make a connection between the signs. The opponent argues that it is common for electronic goods to use letters for different versions but the examples given do not resemble the current situation since they refer to a verbal element followed by a number and a letter whilst the contested sign is only made up of three characters and as such this argument is not applicable. Even in view of the imperfect recollection argument raised by the opponent, the similarity between the signs is so tenuous that it is not credible to believe that the contested mark would act as a conduit.

The opponent refers to previous decisions concerning its ‘O2’ marks but as far as concerns the question of a link, these decisions are not comparable as the contested marks in those decisions showed more similarities than in the present case.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

As there is no link, it is not necessary to examine the issue of injury and therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

The comparison of signs was based on the best case scenario for the opponent since from the other possible perspectives, the signs would be dissimilar in all respects as the initial circular device of the contested sign would not be perceived as an ‘O’. Likewise, even if the remaining earlier marks had been taken into account, the outcome would not differ as the similarity between the signs would be no greater as all of the earlier marks are composed of ‘O2’.

3. LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

1. The opposition will proceed on the basis of EUTM No 6 691 463 .

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 goods and services

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

Class 9:        Scientific, nautical, surveying, weighing, measuring, life-saving apparatus and instruments; automatic vending machines and mechanisms for coin operated apparatus; fire-extinguishing apparatus; protective clothing; protective helmets; magnets; parts and fittings for all the aforesaid goods.

Class 42:        Services of information brokers and providers, namely product research services for others; weather forecasting; information and advisory services relating to the aforesaid.

The contested services are the following:

Class 38:        Communication services, including transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the internet, information services networks and data networks; communication via computer terminals, by digital transmission or by satellite; providing telecommunication connections to the internet or databases; providing third party users with access to telecommunication infrastructure; satellite communication services; satellite transmission services; telecommunication services, including local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable, and satellite transmissions; telecommunication services, including the provision of internet access via broadband, optical or wireless networks; telecommunication services, including transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the internet; telecommunications services for providing multiple-user access to a global computer network; transmission of data, sound and images by satellite.

        

The goods and services are dissimilar. Whilst the contested services are made up of an array of communication services, the services from the earlier right concern product research, weather forecasting and related information services. Even if the services from Class 38 are used as a means to disseminate information and allow communication by remote means, this does not lead to any degree of similarity. Likewise, the goods in Class 9 show no connections with Class 38. First of all, by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist of the provision of intangible activities. None of the contested services coincide in any relevant points of contact with those of the earlier rights, their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another.

Aside from claiming similarity between the goods and services in general, the opponent did not adduce any specific arguments or evidence concerning the goods and services above. Therefore in the absence of any contrary indications, the goods and services are dissimilar.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, even if the opponent refers to the high distinctive character of its marks in general, this claim is in relation to goods and services not protected by the mark in question. Moreover, even if the mark did have an enhanced distinctive character for the goods and services it protects, this cannot overcome the dissimilarity of the goods and services thus rendering this issue redundant.

2. The opposition will proceed on the basis of EUTM No 13 108 139

1. The goods and services

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

Class 38: Telecommunications.

The contested services are the following:

Class 38: Communication services, including transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the internet, information services networks and data networks; communication via computer terminals, by digital transmission or by satellite; providing telecommunication connections to the internet or databases; providing third party users with access to telecommunication infrastructure; satellite communication services; satellite transmission services; telecommunication services, including local and long distance transmission of voice, data, graphics by means of telephone, telegraphic, cable, and satellite transmissions; telecommunication services, including the provision of internet access via broadband, optical or wireless networks; telecommunication services, including transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the internet; telecommunications services for providing multiple-user access to a global computer network; transmission of data, sound and images by satellite.

Telecommunications is identically designated in both marks. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

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 services found to be identical are directed at the public at large and professionals with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the specialised nature of the services, the frequency of purchase and their price.

3. The Signs

The signs have already been compared above in ‘Reputation’ and reference is made those findings which are equally valid here.

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.

As set out extensively in ‘Reputation’ the earlier mark has a proven reputation for the services in Class 38 and reference is made to that assessment and conclusion.

5. Global assessment, other arguments and conclusion

The services have been assumed to be identical and target both the public at large and the professional public. Whilst it is true that the earlier mark has a reputation, the only similarity between the signs is very low and on an aural level. The Opposition Division refers to its reasoning as explicitly set out in ‘Reputation’ and reiterates that in these circumstances there can be no likelihood of confusion.

As stated previously, the comparison of signs was based on the best case scenario for the opponent since from the other possible perspectives, the signs would be dissimilar in all respects, as the initial circular device of the contested sign would not be perceived as an ‘O’. Likewise, even if the remaining earlier marks had been taken into account, the outcome would not differ as the similarity between the signs would be no greater given that all of the earlier marks are composed of ‘O2’.

Considering all the above there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected in full.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Carlos MATEO PÉREZ

Vanessa PAGE

Lucinda CARNEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.