In case T-150/10, the Opposition Division had upheld the opposition against the applied for trademark LOOPIA for Class 42 services brought by Telefonica O2 Germany GmbH on the basis of earlier CTM’s LOOP and LOOPY on the grounds of likelihood of confusion.
The Board of Appeal annulled the OD decision because it considered the goods and services in question were not similar.
The General Court annulled the decision of the First Board of Appeal on the following findings:
First, it must be considered that the ‘Internet site hosting’ services covered by the mark applied for, like some of the goods and services covered by the earlier marks LOOP and LOOPY, are of interest both to professionals and to the general public. All those goods and services involve a higher than average level of attention on their part.
Second, The goods and services of the earlier marks, namely, inter alia, ‘rental of data processing equipment and computers’, ‘computer programming’ and ‘rental of data processing installations and computers’, are essential for the setting up and use of Internet site hosting services which enable documents, pictures, videos or banners to be placed on the server of the Internet site host provider so that they can be accessed by Internet users.
There is therefore a functional complementarity between those goods and services, which all, by their nature, belong to the field of information technology and further, they are sold via the same distribution channels since they are offered for sale on the Internet and in the same specialist IT shops.
Therefore, it must be held that there is a close connection between some of the goods and services covered by the earlier similar marks and Internet site hosting services, with the result that the general public may think that those goods and services are provided by the same undertaking.