KIDS CYBER PHONE HOUSE smaller than ... | Decision 2121237 - The Phone House Netherlands B.V. v. Kids World Group Foundation
Date Published: Sep 28, 2017
OPPOSITION No B 2 121 237
The Phone House Netherlands B.V. and Carphone Warehouse Europe Limited, Euroweg 20, 3825 HD Amersfoort, the Netherlands (opponents) represented by Fieldfisher LLP, Riverbank House 2 Swan Lane, London, London City, EC4R 3TT, United Kingdom (professional representative)
a g a i n s t
Kids World Group Foundation, Mossfon Building 2nd Floor, East 54th Street, Panama City, Panama (applicant), represented by Hauck Patentanwaltspartnerschaft MBB, Mörikestr. 18, 40474 Düsseldorf, Germany (professional representative).
On 03/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 121 237 is partially upheld, namely for the following contested services:
Class 36: Insurance; financial affairs; financial management.
2. European Union trade mark application No 11 118 338 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponents filed an opposition against all the services of European Union trade mark application No 11 118 338. The opposition is based on, inter alia, European Union trade mark registrations No 1 814 052 and No 1 974 914. The opponents invoked Article 8(1)(b) and 8(5) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponents’ European Union trade mark registrations No 1 814 052 and No 1 974 914.
- The goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark registration No 1 814 052
Class 9: Communications apparatus, equipment and accessories; telecommunications apparatus, equipment and accessories; paging apparatus and equipment, computer hardware; computer firmware; computer software; electronic games; electronic amusement apparatus, sound reproducing and/or sound recording apparatus and instruments; publications provided on-line from databases or the Internet; digital music provided from the Internet; computer software supplied from the Internet; computer software and/or telecommunications apparatus to enable connection to databases and the Internet; electric and electronic apparatus and instruments; audio and/or video signal transmitting and/or receiving apparatus; audio and/or video apparatus and instruments; loudspeakers; headphones, burglar alarm apparatus and instruments; fire alarms; smoke detectors; anti-theft warning devices; batteries; battery chargers; calculators; compact discs, CD Roms; compact discs; DVDs; optical discs; computer discs and tapes; media for storing information, data, signals, images and/or sound; machine readable media; photographic apparatus and instruments; parts and fittings for the aforesaid goods.
Class 36: Insurance services; provision of warranties and/or guarantees.
Class 37: Installation, service, maintenance and/or repair of communications apparatus, equipment and accessories, telecommunications apparatus, equipment and accessories, and paging apparatus and equipment; installation, service, maintenance and/or repair of computer hardware and computer firmware; provision of information relating to installation, service, maintenance and/or repair of communications apparatus, equipment and accessories, computer apparatus, equipment and accessories, telecommunications apparatus and accessories, paging apparatus and equipment; installation, services repair and/or maintenance services for consumer electronic products; installation, service, repair and/or maintenance services for photographic apparatus, equipment and accessories.
Class 38: Communications services; telecommunications services; paging services; information, advisory and consultancy services relating to communications services, to telecommunications services, communications apparatus, equipment and accessories, to telecommunications apparatus, equipment and accessories, paging services and to paging apparatus and equipment; rental and hire of communications apparatus, equipment and accessories, of telecommunications apparatus, equipment and accessories, paging services and to paging apparatus and equipment; rental and hire of communications apparatus, equipment and accessories, of telecommunication apparatus, equipment and accessories, and of paging apparatus and equipment; provision of information relating to communications, telecommunications, paging and computing; providing telecommunications connections to a global computer network; message sending; electronic communication services; providing user access to a global computer network; telecommunication of information and/or computer programmes; telecommunication gateway services.
European Union trade mark registration No 1 974 914
Class 9: Communications apparatus, equipment and accessories; telecommunications apparatus, equipment and accessories; paging apparatus and equipment, computer hardware; computer firmware; computer software; electronic games; electronic amusement apparatus, sound reproducing and/or sound recording apparatus and instruments; publications provided on-line from databases or the Internet; digital music provided from the Internet; computer software supplied from the Internet; computer software and/or telecommunications apparatus to enable connection to databases and the Internet; electric and electronic apparatus and instruments; audio and/or video signal transmitting and/or receiving apparatus; audio and/or video apparatus and instruments; loudspeakers; headphones, burglar alarm apparatus and instruments; fire alarms; smoke detectors; anti-theft warning devices; batteries; battery chargers; calculators; compact discs, CD Roms; compact discs; DVDs; optical discs; computer discs and tapes; media for storing information, data, signals, images and/or sound; machine readable media; photographic apparatus and instruments; parts and fittings for the aforesaid goods.
Class 35: Retail services in the fields of the following individually or in combination: communications apparatus and/or equipment and/or accessories, telecommunications apparatus and/or equipment and/or accessories, paging apparatus and/or equipment, computer hardware, computer firmware, computer software, electronic games, electronic amusement apparatus, sound reproducing and/or recording apparatus and/or instruments, publications provided on-line from databases or the Internet, digital music provided from the Internet, computer software supplied from the Internet, computer software, telecommunications apparatus to enable connection to databases and the Internet, electric and/or electronic apparatus and/or instruments, audio and/or video signal transmitting and/or receiving apparatus, audio and/or video apparatus and/or instruments, loudspeakers, headphones, burglar alarm apparatus and/or instruments, fire alarms, smoke detectors, anti-theft warning devices, batteries, battery chargers, calculators, compact discs, CD ROMS, DVDs, optical discs, computer discs, tapes, media for storing information and/or data and/or signals; retail services via the Internet and/or interactive television in the field of the following individually or in combination: communications apparatus and/or equipment and/or accessories, telecommunications apparatus and/or equipment and/or accessories, paging apparatus and/or equipment, computer hardware, computer firmware, computer software, electronic games, electronic amusement apparatus, sound reproducing and/or recording apparatus and/or instruments, publications provided on-line from databases or the Internet, digital music provided from the Internet, computer software supplied from the Internet, computer software telecommunications apparatus to enable connection to databases and the Internet, electric and/or electronic apparatus and/or instruments, audio and/or video signal transmitting and/or receiving apparatus, audio and/or video apparatus and/or instruments, loudspeakers, headphones, burglar alarm apparatus and/or instruments, fire alarms, smoke detectors, anti-theft warning devices, batteries, battery chargers, calculators, compact discs, CD ROMS, DVDs, optical discs, computer discs, tapes, media for storing information and/or data and signals; retail services; retail services via the Internet and/or interactive television.
Class 36: Insurance in relation to communications apparatus and/or equipment and/or accessories; telecommunications apparatus and/or equipment and/or accessories; paging apparatus and/or equipment, computer hardware; computer firmware; computer software; electronic games; electronic amusement apparatus, sound reproducing and/or sound recording apparatus and instruments; publications provided on-line from databases or the Internet; digital music provided from the Internet; computer software supplied from the Internet; computer software, telecommunications apparatus to enable connection to databases and the Internet; electric and/or electronic apparatus and/or instruments; audio and/or video signal transmitting and/or receiving apparatus; audio and/or video apparatus and instruments; loudspeakers; headphones, burglar alarm apparatus and/or instruments; fire alarms; smoke detectors; anti-theft warning devices; batteries; battery chargers; calculators; compact discs, CD Roms; DVDs; optical discs; computer discs, tapes; media for storing information and/or data and/or signals.
Class 38: Communications services; telecommunications services; paging services; information, advisory and consultancy services relating to communications services, to telecommunications services, communications apparatus, equipment and accessories, to telecommunications apparatus, equipment and accessories, paging services and to paging apparatus and equipment; rental and hire of communications apparatus, equipment and accessories, of telecommunications apparatus, equipment and accessories, and of paging apparatus and equipment; provision of information relating to communications, telecommunications and paging; providing telecommunications connections to a global computer network; message sending; electronic communication services; providing user access to a global computer network; telecommunication of information and/or computer programmes; telecommunication gateway services.
Class 42: Provision of information relating to computing.
The contested services are the following:
Class 36: Insurance; financial affairs; financial management; real estate agencies and management; issue of phone card services.
Class 38: Telecommunication routing and junction services.
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 36
The contested insurance is identically contained in both lists of services (EU No 1 814 052). They are, therefore, identical.
The contested insurance includes, as a broader category, the opponents’ insurance in relation to communications apparatus and/or equipment and/or accessories (EU No 1 974 914). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponents’ services.
The contested financial affairs; financial management are similar to the opponents’ insurance services in Class 36 (both earlier marks) that consist of accepting liability for certain risks and respective losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingency occurs, such as death, accident, sickness, contract failure or, in general, any event capable of causing damages. These services have the same nature, distribution channels, they target the same public and it is not unusual that these services are provided by the same kinds of undertakings.
The contested issue of phone card services in Class 36 are similar to the opponents’ telecommunications services in Class 38 (both earlier marks). These services target the same public, have the same distribution channels and are usually offered by the same kinds of undertakings.
The contested real estate agencies and management comprise the managing of real estate properties, real estate agency and the evaluation of real estate properties, as well as the consultancy and provision of the services related thereto. This mainly involves the finding of property, making it available for potential buyers and acting as an intermediary. The opponents’ goods in Class 9 include all kinds of apparatus, equipment and accessories; Class 35 mainly includes retail services of all kinds of goods; Class 36 mainly includes services rendered in relation to insurance contracts; Class 37 mainly includes installation, maintenance and repair services; Class 38 mainly includes telecommunication services and Class 42 includes the provision of information relating to computing. When comparing the contested services with the opponents’ goods and services, consumers clearly distinguish the real estate agents’ services from the goods and services of the opponents. They do not expect, for example, an insurance or a telecommunication company, to find them housing. The mere fact that real estate may have to be assured against certain risks is not enough to find similarity between the real estate services and the opponents’ services. The services are dissimilar.
Contested services in Class 38
The contested telecommunication routing and junction services are included in the broad category of the opponents’ telecommunications services in Class 38 (both earlier marks). Therefore, they are identical.
- 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 are directed at the public at large and at business customers with specific professional knowledge or expertise in, inter alia, the insurance, financial and telecommunications sector. The level of attention varies from average to above average. Bearing in mind that some of these services may have important financial consequences for their users, such as financial affairs and insurance services in Class 36, the level of attention of the relevant public is considered to be above average for these services.
- The signs
PHONE HOUSE | |
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 earlier marks are word marks consisting of the words ‘PHONE HOUSE’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.
The contested sign is a figurative mark consisting of the words ‘KIDS CYBER PHONE HOUSE’, written in a slightly fancy typeface in capital letters, represented in a curved line. It is placed on top of the contested sign. Underneath appears a figurative element in the form of a circle in black and one part in white (a pie chart) and at the bottom part, also in a slightly fancy lowercase typeface and in a curved line, appear the words ‘smaller than …’ in much smaller letters.
As the earlier marks are word marks, they have no element which could be considered clearly more dominant (visually eye-catching) than other elements. Regarding the contested sign, the words ‘KIDS CYBER PHONE HOUSE’, together with the figurative element in the form of a black circle with one piece in white (a pie chart), are the dominant elements, compared to the words ‘smaller than…’, which are written in a much smaller typeface and have a more secondary position, at the bottom.
The earlier marks, composed of the words ‘PHONE’ and ‘HOUSE’, will be understood by the English-speaking public as referring to an establishment selling phones. For the remaining part of the public, the word ‘PHONE’ is not only similar to equivalent words in other languages, such as ‘telefoon’ (in Dutch), ‘Телефон’ (in Bulgarian), ‘telefon’ (in Danish, German, Estonian, Hungarian, Polish, Romanian, Slovenian, Czech, Swedish), ‘téléphone’ (in French), ‘τηλέφωνο’ (in Greek), ‘telefono’ (in Italian), ‘telefons’ (in Latvian), ‘telefonas’ (in Latvian), ‘telefone’ (in Portuguese), ‘telefón’ (in Slowakian), ‘teléfono’ (in Spanish), but it also belongs to the basic English vocabulary, as well as the word ‘HOUSE’ does, and will be understood by the whole public. The latter is understood as referring to ‘a building in which people live, usually the people belonging to one family; the name of types of places where people go to eat and drink; names of types of companies’ (see Collins English Dictionary online). The Opposition Division points out that while it is true that the earlier marks ‘PHONE HOUSE’ have a low distinctive character, since these words together are weak with respect to all kinds of telecommunication and telephone services in Classes 36 and 38, the earlier marks are perfectly distinctive for the opponent’s insurance and financial services in Class 36.
The words ‘PHONE HOUSE’ in the contested sign are perceived as having the same meaning as in the earlier marks. These elements are normally distinctive for the following contested services: insurance; financial affairs; financial management in Class 36, but these are weak elements for the following contested services: issue of phone card services in Class 36 and telecommunication routing and junction services in Class 38, since these services are offered in this kind of places. Furthermore, the word ‘KIDS’ is the plural form of ‘kids’ meaning children and the word ‘CYBER’, often used as a combining form, refers to computing. The word ‘KIDS’ could be considered weak, at least for a part of the services, for example those in Class 36, as the term ‘KIDS’ could be perceived by a part of the relevant public as referring to the fact that the services in particular target children, but for the remaining part of the public, that does not understand English, this word is meaningless. Even though the word ‘CYBER’ refers to the fact that the company ‘PHONE HOUSE’ is more specialised in the IT field, regarding the relevant services, the Opposition Division finds that this word (CYBER) is normally distinctive. The words ‘KIDS’, at least for a part of the public, and the word ‘CYBER’, together with the figurative element in the form of a pie chart (no meaning for the relevant services), and the words ‘smaller than…’ are the most distinctive elements, for the above mentioned reasons. Even if the words ‘smaller than…’ are understood, they have no direct meaning with respect to the relevant services.
Visually, the signs coincide in the words ‘PHONE HOUSE’, meaning that the earlier marks, as a whole, are included in the contested sign’s co-dominant elements. These elements are, however, weak for part of the relevant services and are distinctive elements for the remaining relevant services. The marks differ in the additional words ‘KIDS CYBER’, of which the word ‘KIDS’ is less distinctive for at least a part of the services and a part of the public, in the figurative element and in the words ‘smaller than…’ of the contested sign, as pointed out above. However, regarding the words ‘smaller than…’, these are visually less dominant.
Regarding the figurative element in the contested sign, the Opposition Division points out the following: when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Regarding the slightly fancy typeface in which the verbal elements of the contested sign are written, this stylisation must be considered not that overwhelming and it will not lead the consumer’s attention away from the words it seems to embellish.
Therefore, the signs are visually similar to a low degree for the services for which the words ‘PHONE HOUSE’ are weak and they are similar to an average degree for the other services for which ‘PHONE HOUSE’ is distinctive.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables /PHONE/ /HOUSE/, present identically in all the signs. The pronunciation differs in the sound of the words /KIDS/ /CY-BER/, which have no counterparts in the earlier marks. The word ‘KIDS’ is, however, less distinctive, for at least a part of the services and a part of the public. As the words ‘smaller than…’ are less dominant and placed in a secondary position, the Opposition Division is of the opinion that these words are most probably not pronounced. Therefore, the signs are aurally similar to an average degree for the following services: insurance; financial affairs; financial management in Class 36 and have a low degree of similarity for the following services: issue of phone card services in Class 36 and telecommunication routing and junction services in Class 38.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning to the extent that they both refer to the concepts of ‘PHONE’ and ‘HOUSE, the signs are conceptually similar to an average degree for a part of the relevant services, according to the same principle as mentioned above. However, although the coinciding words ‘PHONE HOUSE’ will evoke (a) concept(s), as these elements are weak for part of the relevant services, namely those as mentioned above, and cannot indicate the commercial origin of any of the marks for these services, the marks will be conceptually similar only to a low degree. This is because the attention of the relevant public will mainly be attracted by the meanings of the additional elements, namely the figurative element in the contested sign that refers to a pie chart and is perceived as such, the word ‘KIDS’ and ‘CYBER’. Even though the former (KIDS) is weak for a part of the public and part of the services, all these additional concepts are perceived in the contested sign.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
The opponents claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for part of the relevant services and for another part of the services they have a meaning. Therefore, the distinctiveness of the earlier marks must be seen as normal for the following services: insurance; financial affairs; financial management in Class 36. However, considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for the following services: issue of phone card services in Class 36 and telecommunication routing and junction services in Class 38.
- Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The contested services have been found to be partially identical or similar and partially dissimilar and the level of attention varies from average to above average. The earlier marks have a normal degree of distinctiveness for a part of the services and for another part of the services their distinctiveness is low.
For part of the services, namely issue of phone card services in Class 36 and telecommunication routing and junction services in Class 38, the marks are visually, aurally and conceptually similar to a low degree and for another part of the services, namely insurance; financial affairs; financial management in Class 36, the marks have been found visually, phonetically and conceptually similar to an average degree.
The relevant consumers might be led, therefore, by the visual, aural and conceptual similarity of the words ‘PHONE HOUSE’, to believe that the following contested services: insurance; financial affairs; financial management in Class 36, come from the same undertaking or economically-linked undertakings. Taking into account all the circumstances, the differences between the signs are not sufficient to counteract the similarities and to safely exclude a likelihood of confusion, even taking into account a higher degree of attention.
Furthermore, it is very likely that the consumer in the relevant territory will consider the conflicting marks as having the same commercial origin, for example, that the contested sign with its additional elements represents a new line or a parallel line of the opponent’s services (05/09/2007, T-220/06, JAKO-O Möbel und Spielmittel für die junge Familie GmbH, EU:T:2007:244). In the field of the services at hand, it is not unusual that manufacturers frequently put several lines of services on the market under different sub-brands.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
For the remaining contested services, namely issue of phone card services in Class 36 and telecommunication routing and junction services in Class 38, the marks are visually, aurally and conceptually similar to a low degree. It is important to bear in mind that the terms ‘PHONE HOUSE’, which are the only common elements of the signs, are weak elements for a part of the contested services, as stated above. The earlier marks have a low degree of distinctiveness for these services. Hence, the presence of these coinciding words does not impinge upon the way the signs are perceived. The coincidence in these elements cannot result in a likelihood of confusion for the above mentioned services in Classes 36 and 38. Indeed, it is mainly due to the presence of all the additional (distinctive) elements in the contested sign that there is no likelihood of confusion. The Opposition Division is of the opinion that, notwithstanding a certain similarity between the signs, this will not cause consumers to confuse them. Even considering the identity or similarity of the some of the contested services in Classes 36 and 38 with the opponent’s services, there will be no likelihood of confusion in respect of such services.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public for some of the contested services and therefore the opposition is partly well-founded on the basis of the opponents’ European Union trade mark registrations No 1 814 052 and No 1 974 914.
It follows from the above that the contested trade mark must be rejected for a part of the services found to be identical or similar 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.
The opponents have also based their opposition on the following earlier trade marks:
- Benelux trade mark registration No 657 356 for the word mark ‘PHONE HOUSE’ for goods and services in Classes 9, 36, 37, 38 and 42.
- Benelux trade mark registration No 656 003 for the word mark ‘PHONE HOUSE’ for goods and services in Classes 9, 36, 37, 38 and 42.
Since these marks are identical to the ones which have been compared and cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.
- European Union trade mark registration No 11 040 185 for the word mark ‘PHONE HOUSE CONNECT’ for services in Class 35.
- Benelux trade mark registration No 857 891 for the word mark ‘THE PHONE HOUSE, MET DE HARTELIJKE SERVICE’ in Classes 9, 35 and 38.
- Benelux trade mark registration No 887 200 for the word mark ‘The Phone House Smartphone Kleswijzer’ for goods and services in Classes 9 and 38.
- Benelux trade mark registration No 893 349 for the word mark ‘The Phone House Werkend Op Weg’ for services in Classes 36 and 38.
The other earlier rights invoked by the opponents are less similar to the contested mark. This is because they contain further additional words such as ‘CONNECT’, ‘THE…MET DE HARTELIJKE SERVICE’, ‘The…Smartphone Kleswijzer’ and ‘The…Werkend Op Weg’ which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of goods and services and the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.
- Benelux trade mark registration No 923 789 for the word mark ‘TOCH WEER PHONE HOUSE’ for goods and services in Classes 9, 28, 35, 38 and 42.
The other earlier right invoked by the opponents covers also goods in Class 28 such as ‘electronic games’ which are clearly different to the remaining contested services, namely real estate agencies and management in Class 36 of the contested trade mark. These goods and services have a different nature, purpose. They target another public, have different distribution channels, are not complementary nor in competition. They also normally have a different origin. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.
REPUTATION – ARTICLE 8(5) EUTMR
The opponents claim reputation for the earlier European Union trade mark registration No 1 814 052 in the Benelux countries, Germany, Spain and France for all the goods and services in Classes 9, 36, 37 and 38, European Union trade mark registration No 1 974 914 in the Benelux countries, Germany, Spain, France and Portugal for all the goods and services in Classes 9, 35, 36, 38 and 42, Benelux trade mark registration No 656 003 for the word mark ‘PHONE HOUSE’ in the Benelux countries for goods and services in Classes 9, 36, 37, 38 and 42 and Benelux trade mark registration No 657 356 in the Benelux countries for the word mark ‘PHONE HOUSE’ for goods and services in Classes 9, 36, 37, 38 and 42.
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.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponents do not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.
In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.
On 07/01/2013 the opponents were given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired, after several extensions, on 10/11/2016.
The opponents did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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
Saida CRABBE | Chantal VAN RIEL | 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.