Judgments nº T-665/18 of Tribunal General de la Unión Europea, November 28, 2019

• Resolution Date: November 28, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-665/18

(EU trade mark - Opposition proceedings - International registration designating the European Union - Word mark Vibble - Earlier German word mark vybe - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-665/18,

Soundio A/S, established in Drammen (Norway), represented by N. Köster and J. Albers, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being:

Telefónica Germany GmbH & Co. OHG, successor to E-Plus Mobilfunk GmbH, established in Düsseldorf (Germany), represented by P. Neuwald, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 4 September 2018 (Case R 721/2018-5), relating to opposition proceedings between E-Plus Mobilfunk GmbH and Soundio,

THE GENERAL COURT (Eighth Chamber),

Composed, at the time of deliberation, of A.M. Collins, President, M. Kancheva (Rapporteur) and G. De Baere, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 12 November 2018,

having regard to the response of EUIPO lodged at the Court Registry on 15 February 2019,

having regard to the response of the intervener lodged at the Court Registry on 21 February 2019,

having regard to the fact that no request for a hearing was submitted by the parties within 3 weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 21 July 2015, the applicant, Soundio A/S, obtained international registration covering the European Union for the word mark Vibble from the World Intellectual Property Organisation (WIPO) under number 1 290 194.

2 On 3 March 2016, the European Union Intellectual Property Office (EUIPO) received notification of the international registration of that mark, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods and services in respect of which protection was sought are, inter alia, in Classes 9, 38 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 9: ‘Computers; computer software, including computer software for use in connection with websites on the internet and other services containing music, music streaming services, other online entertainment services, online meetings, online communication services and online games; computer software for music production; computer software for the playing, recording, processing and reproduction of sound and music; electronic effect pedals for musical instruments; CD-recordings’;

- Class 38: ‘Telecommunication services, including broadcasting of digital and nondigital audio- and audiovisual content, TV programs, video content and films, wireless telephone services featuring music and music information; electronic transmission of data and information, communications by computer terminals; communications by fibre optic networks; transmission of still and moving images; communications by mobile phones; rental of access time to databases; providing access to digital music websites on the internet; internet radio broadcasting services; sound and television broadcasting of music, performance and other entertainment activities via the internet and other telecommunication systems, telecommunications in the internet, letting of access to chat space and discussion forums in the internet, digital pictures and services related to transmission of sound’;

- Class 42: ‘Design and development of computer software, professional and technical assistance relating to product development and professional and technical assistance relating to engineering; consultant services related to computers, computer software; individual design and development of computer software, computer systems, websites and networks for others, hosting computer sites; hosting on-line facilities for conducting interactive discussion groups in the fields of music and entertainment via a global computer network’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/044 of 4 March 2016.

5 On 1 December 2016, E-Plus Mobilfunk GmbH, succeeded by the intervener, Telefónica Germany GmbH & Co. OHG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

6 The opposition was based inter alia on the earlier German mark vybe, filed on 19 September 2006 and registered on 13 November 2006 under number 30 658 294, covering in particular, ‘telecommunications, in particular mobile communications’ services.

7 The ground relied on in support of the opposition was that laid down in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 By decision of 19 February 2018, the Opposition Division of EUIPO upheld the opposition in part with respect to all of the goods and services at issue in Classes 9, 38 and 42, on the ground that there was a likelihood of confusion between the trade marks concerned. However, it rejected the opposition with respect to certain services in Class 42, namely ‘professional and technical assistance relating to product development and professional and technical assistance relating to engineering’ on the ground that they were different from the ‘telecommunications, in particular mobile communications’ services covered by the earlier German mark.

9 On 18 April 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 4 September 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In particular, it found that having regard to the level of attention of the public, which varies from average to high, the identity or similarity of the goods and services covered by the marks at issue, the average degree of visual similarity and the ‘considerable’ degree of phonetic similarity, and taking into account the fact that it is impossible to compare the marks on a conceptual level, there was a likelihood of confusion between the marks at issue with respect to the goods and services at issue in Classes 9, 38 and 42.

11 However, the Board of Appeal annulled in part the decision of the Opposition Division in so far as it had erroneously included ‘computer software for music production’ in Class 9 in the list of the goods at issue, in respect of which the opposition had been upheld, even though the opposition had not been directed at those goods.

Forms of order sought

12 The applicant claims that the Court should:

- annul the contested decision;

- authorise registration of the mark applied for in respect of all of the goods and services covered;

- order EUIPO to pay the costs.

13 EUIPO and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

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