Applicant’s Comments on Opposition No. 002598384 - iSelf
In response to opposition No. B 002598384, we are submitting the Applicant’s comments below:
1. Reason for filing the application
The main reason for filing a trademark application is protecting a range of iSelf internet domain names the Applicant already owns and has been using since before the opponent’s trademark was registered.
The most significant iSelf domain names are listed below:
iSelf.net purchased on the 7th of May 2007
iSelf.com purchased on the 24th of August 2007
iSelf.co.uk purchased in September 2007
Furthermore, the Applicant was the founder and co-owner of iSelf LTD, a UK company registered on 27/09/2007. Company No. 06383781.
The Applicant is using the iSelf name in Apple’s AppStore, where the mark is used for selling Mobile Apps.
The Applicant owns a company named iSelf srl, registered in Romania, Registry of commerce no. J08/1635/2004, VAT Number: RO 16595380.
2. Similarity of the signs
2.2 Conceptual similarity
The “i” prefix. The “i” prefix gained a lot of attention since Apple’s line of products, particularly the iPhone, became very popular. The first iPhone started selling on the 29th of June 2007, 50 days after the iSelf.net domain was purchased by the Applicant. Since then, the “i” prefix was added to almost every possible word that can describe a product, diluting it’s attribute of distinctiveness.
Shelf vs Self The Applicant argues that even beginner English speaking individuals know the meaning of the basic words “shelf” and “self”. Conceptually, the dominant words forming both marks have a completely different meaning, in areas that don’t have anything in common, at least to the point when a Shelf gains self-consciousness and starts reflecting on its own existence, which is highly improbable, to say the least.
2.3 Visual similarity Since the new word mark has only 5 letters, the first being very narrow, the “H” letter is adding 30% to the overall length of the word, even in uppercase lettering.
Marks in uppercase lettering: ISELF ISHELF
While in common rulings the lower/upper case lettering of word marks is ignored, the Applicant argues that the actual use should be taken in account if the signs are not identical, and there is clear evidence that the earlier mark is used in a certain manner, as in this case. The iSHELF® mark, as used by the Opponent and in the form that it was registered, along with all the other range of products it’s associated with (iBOX®, iPUSH®, iTURN®, iROTATE®, iWEIGHT®, etc.) are using capitalized letters, prefixed by the “i” letter in lowercase. The iSelf™ mark is using mostly lowercase letters, with the exception of the “S”, which is written in uppercase. This results in a very different visual appearance, as illustrated below:
Marks as used/registered: iSelf iSHELF Lowercase vs uppercase letters: i S e l f i S H E L F
The “H” letter, a wide and tall letter, occupies the space of more than two joined “I” letters, making it very hard to miss visually. The e and E characters look completely different, while the f and F could have the potential to be confused, if separated and observed from a distance or by someone having lower visual acuity.
2.4 Phonetic similarity In both English and German, iShelf is pronounced [aɪʃɛlf] and iSelf is pronounced [aɪsɛlf]. The differing sounds [ʃ] and [s] are both part of the German and English phoneme repertoire and distinguishing them is essential to understand the German/English language. Considering the fact that purchases of products of the earlier mark are not done over the telephone or by word of mouth, where some low degree of confusion might arise if taken out of context, and that the conceptual aspect is more important in this case, the Applicant feels that the marks are to be considered similar on a low level.
2.5 Distinctiveness of the earlier mark The iSHELF® mark’s components are the popular “i” prefix, and the word “SHELF”. The “i” prefix is considered descriptive, as it has been extensively used by Apple worldwide. (Decision of 19/04/2004,R 0758/2002-2, ITUNES, § 11) The word SHELF precisely describes the product, which is a storage shelf, making this element also descriptive. Thus, the iSHELF® mark has less than normal distinctiveness.
3. Likelihood of confusion
3.1 Relevant public Considering the actual use of the iSHELF® mark by the opponent, as part of a more complex warehouse and production storage system (CPS®KANBAN), and given the fact that Würth Industrie Service GmbH & Co. KG is a major and well known provider of products aimed at the professional market, the Applicant argues that the relevant public will choose the established and respected Würth brand as the origin of goods, when making a purchase decision, even before looking at the name of the components of the system.
3.1.1 Professional public The earlier mark, iSHELF® is targeting the Professional public, as stated on the Opponent’s website: “Würth Industrie Service is responsible for supplying the industrial sector as a full service provider of C-Parts with an extensive range of more than 1,000,000 items.”
3.1.2 High degree of attention There is a high degree of attention from the relevant public, as the need and commercial advantage that such a specialized system offers (iSHELF) implies a high volume of goods being stored and manipulated. Generally, the professional public is making educated and informed decisions, many times vetted by multiple people, hence the degree of attention is high, lacking the impulse buy situation that could cause confusion in similar products in the mass consumer market.
3.1.3 Origin of the product The origin of the product is a well established brand, Würth, and not the iSHELF® mark. Therefore,it is the Applicant’s opinion that a likelihood of confusion or association cannot be established, as it requires that there is confusion as to the origin.
3.2 Acquired enhanced distinctiveness of the earlier mark If the earlier mark, iSHELF®, is to be considered to have acquired enhanced distinctiveness through use, the Applicant asks that the actual form “iSHELF”, with the word shelf in upper case lettering, to be taken into account, this way lowering the visual similarity of the marks.
4. Conclusion Since the iSelf mark can’t be used to market a smart storage product (shelf) in any reasonable way, the Applicant feels that there is no actual likelihood of confusion and that the marks can peacefully coexist without any conflict, since there is no conceptual overlap. The Applicant asks that the mark is to be registered and the Opposition denied, and that each party should carry its own cost.
5. Limitation of goods Furthermore, the Applicant is also filing for a limitation of goods in the smart storage market, mainly storage shelves, by adding the following text to class 9: “; all aforementioned goods, except shelving units or structures.”