The trademark T TEKFEN was filed by TEKFEN INSAAT VE TESISAT ANONIM SIRKETI, a corporation established under the laws of the Republic of Turkey (the "Applicant"). The application was published for oppositions on July 5, 2020, and received one opposition filed on October 5, 2020 by Deutsche Telekom AG on (a) Likelihood of confusion, (b) Unfair advantage and detriment to distinctiveness or repute. the opponent was represented by HOGAN LOVELLS INTERNATIONAL LLP and proceedings were handled in English, and the oppositon was dismissed by the Euorpean Union Intellectual Property Office with decision issued October 5, 2020
The application was filed in English, and English was also language of all opposition proceedings (Spanish was selected as the second language).
The Appeal with reference B R0429/2023-2 was Opposition partially rejected according to Article 8(1)(b) EUTMR with decision issued on September 24, 2024 by the EUIPO. The Opposition with reference B 003132198 was partially refused EUTMA/IR according to Article 8(1)(b) EUTMR with decision issued on December 19, 2022 by the EUIPO.
The application claimed as seniority of the Republic of Austria trademark 857224 registered on December 7, 2005 and filed on March 17, 2005 which was accepted by the office.
Goods And Services
The mark was filed in class 1 with following description of goods:
Chemicals for use in industry, science and photography, as well as in agriculture, horticulture and forestry
Fire extinguishing and fire prevention compositions
Tempering and soldering preparations
Substances for tanning animal skins and hides
Adhesives for use in industry
Putties and other paste fillers
Compost, manures, fertilizers
Biological preparations for use in industry and science
Chemical compositions for use in construction
Chemicals for use in the oil industry
Petroleum derivatives.
The mark was filed in class 5 with following description of goods:
Pharmaceuticals, medical and veterinary preparations
Sanitary preparations for medical purposes
Dietetic food and substances adapted for medical or veterinary use, food for babies
Dietary supplements for human beings and animals
Plasters, materials for dressings
Material for stopping teeth, dental wax
Disinfectants
Preparations for destroying vermin
Fungicides, herbicides.
The mark was filed in class 6 with following description of goods:
Common metals and their alloys, ores
Metal materials for building and construction
Transportable buildings of metal
Non-electric cables and wires of common metal
Small items of metal hardware
Metal containers for storage or transport
Safes
Metal alloys for further manufacturing
Building and construction materials and elements of metal
Reinforcement materials (metal -) for construction
Platforms of metal
Offshore drilling platforms [metal]
Metal containers for the storage and transportation of goods
Metal tanks [containers]
Metal storage tanks
Separation tanks of metal
Liquefied gas storage tanks of metal.
The mark was filed in class 7 with following description of goods:
Machine tools, power-operated tools
Motors and engines, except for land vehicles
Machine coupling and transmission components, except for land vehicles
Agricultural implements, other than hand-operated hand tools
Incubators for eggs
Automatic vending machines
Machines and machine tools for treatment of materials and for manufacturing
Machines for manufacturing containers
Agricultural, earthmoving, construction, oil and gas extraction and mining equipment
Construction machines
Concrete construction machines
Road construction machines
Oil tanks [vehicle engine parts]
Drilling rigs for drilling off-shore wells
Lifting platforms
Electrical generator stations
Electric power generators
Portable electric power generators
Pumping units and apparatus [machines]
Oil-well pumping machines
Heat exchangers being parts of machines
Fluid separation machines
Heat recovery devices [parts of machines]
Electric power generators using waste heat
Waste disposal machines
Waste management and recycling machines
Container handling machines
Food waste disposals [garbage disposals]
Garbage disposal machines
Welding machines, welding apparatus.
The mark was filed in class 9 with following description of goods:
Scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments
Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity
Apparatus and instruments for recording, transmitting, reproducing or processing sound, images or data
Recorded and downloadable media, computer software, blank digital or analogue recording and storage media
Mechanisms for coin-operated apparatus
Cash registers, calculating devices
Computers and computer peripheral devices
Diving suits, divers' masks, ear plugs for divers, nose clips for divers and swimmers, gloves for divers, breathing apparatus for underwater swimming
Fire-extinguishing apparatus
Motion sensors
Operating system programs
Operating systems
Pre-recorded media
Pre-recorded compact discs
Lighting controls
Batteries
Battery chargers
Automatic control devices
Automatic switchboards
Railway signals
Receivers of electronic signals
Computer central processing units
Electro-dynamic apparatus for the remote control of railway points
Railway traffic safety apparatus
Apparatus for monitoring gas consumption
Civil engineering software
Petrochemical analyzers
Charging stations for electric vehicles
Chemical reactors
Separation columns for scientific purposes
Transformers, telephone apparatus, switchboards, telephone wires, distribution boards, distribution consoles, distribution boxes, switchboxes, condensers, switches, sockets, plugs and other contacts.
The mark was filed in class 19 with following description of goods:
Materials, not of metal, for building and construction
Rigid pipes, not of metal, for building
Asphalt, pitch, tar and bitumen
Transportable buildings, not of metal
Monuments, not of metal
Sand, gravel, crushed stone, asphalt, bitumen, cement, gypsum, plaster, concrete, marble blocks for construction
Building and construction materials and elements, not of metal
Non-metallic transportable constructions
Road construction materials (non-metallic -)
Civil engineering structures (non-metallic -)
Fabrics for use in civil engineering
Platforms of non-metallic materials
Cement posts, cement slabs.
The mark was filed in class 22 with following description of goods:
Ropes and string
Nets
Tents and tarpaulins
Awnings of textile or synthetic materials
Sails
Sacks for the transport and storage of materials in bulk
Padding, cushioning and stuffing materials, except of paper, cardboard, rubber or plastics
Raw fibrous textile materials and substitutes therefor
Yarns for use in tyre cord construction
Bags and sacks for packaging, storage and transport.
The mark was filed in class 31 with following description of goods:
Raw and unprocessed agricultural, aquacultural, horticultural and forestry products
Raw and unprocessed grains and seeds
Fresh fruits and vegetables, fresh herbs
Natural plants and flowers
Bulbs, seedlings and seeds for planting
Live animals
Foodstuffs and beverages for animals
Malt
Fertilized eggs for hatching
Bedding and litter for animals
Bedding material for animals.
The mark was filed in class 35 with following description of goods:
Advertising
Business management
Business administration
Office functions
Marketing and public relations
Organization of exhibitions and trade fairs for commercial or advertising purposes
Design for advertising
Provision of an online marketplace for buyers and sellers of goods and services
Secretarial services
Arranging newspaper subscriptions for others
Compilation of statistics
Rental of office machines
Systemization of information into computer databases
Business project management services for construction projects
Airport administration services
Retail or wholesale services to lubricants, to pharmaceutical preparations, to computer software, to information technology equipment, to furniture, to hand-operated tools for construction, to building materials, to food, to vehicles, to earthmoving equipment, to construction equipment, to horticultural products, to live animals
Procurement services
Consultancy services relating to the procurement of goods and services
The bringing together, for the benefit of others, of a variety of goods, namely chemicals for use in industry, science, photography, as well as in agriculture, horticulture and forestry, compost, manures, fertilizers, chemical compositions for use in construction and in the oil industry, petroleum derivatives, pharmaceuticals, medical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, disinfectants, preparations for, destroying vermin, fungicides, herbicides, common metals and their alloys, ores, metal materials for building and construction, metal containers for storage or transport, metal tanks [containers], metal storage tanks, liquefied gas storage tanks of metal, machines, machine tools, power-operated tools, motors and engines, except for land vehicles, agricultural implements, other than hand-operated hand tools, machines for manufacturing containers, equipment for agricultural, earthmoving, construction, oil, and gas extraction and mining, construction machines, concrete construction machines, road construction machines, oil tanks [vehicle engine parts], dilling rigs for drilling off-shore wells, electric power generators, pumping units and apparatus [machines], oil-well pumping machines, heat exchangers being parts of machines, fluid separation machines, heat recovery devices [parts of machines], waste disposal machines, container handling machines, garbage disposal machines, welding, machines, welding apparatus, scientific, research, navigation, surveying, photographic, cinematographic, audiovisual, optical, weighing, measuring, signalling, detecting, testing, inspecting, life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity, apparatus and instruments for recording, transmitting, reproducing or, processing sound, images or data, computer software, motion sensors, operating system programs, lighting controls, batteries, automatic control devices, automatic switchboards, railway signals, railway traffic safety apparatus, apparatus for monitoring gas consumption, civil engineering software, petrochemical analyzers, chemical reactors, separation columns for scientific purposes, transformers, telephone apparatus, switchboards, telephone wires, distribution boards, materials not of, metal, for building and construction, rigid pipes, not of metal, for building, asphalt, pitch, tar and bitumen, transportable buildings, not of metal, sand, gravel, crushed stone, asphalt, bitumen, cement, gypsum, plaster, concrete, marble blocks for construction, civil engineering structures (non-metallic -), fabrics for use in civil engineering, platforms of non-metallic materials, cement posts, cement slabs, ropes and string, nets, tents and, tarpaulins, a awnings of textile or synthetic materials, sails, sacks for the transport and storage of materials in bulk, padding, cushioning and stuffing materials, yarns for use in tyre cord construction, bags and sacks for packaging, storage and transport, raw and unprocessed agricultural, aquacultural, horticultural and forestry products, raw and unprocessed grains and seeds, fresh fruits and vegetables, fresh herbs, natural plants and, flowers, bulbs, seedlings and seeds for planting, live animals, foodstuffs and beverages for animals, malt, fertilized eggs for hatching, bedding and litter for animals, bedding material for animals, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues.
The mark was filed in class 36 with following description of goods:
Insurance
Financial affairs
Monetary affairs
Real estate affairs
Brokerage services
Financial consultancy
Administration of financial affairs
Arranging the payment of customs duties
Arranging the return of customs duties
Financial consultancy in the energy sector
Arranging finance for construction projects
Arranging the provision of finance for construction operations
Provision of finance for civil engineering constructions
Real estate procurement for others
Real estate management
Real estate services
Assessment and management of real estate
Consultancy services relating to real estate
Real estate appraisal
Rental of real estate and property.
The mark was filed in class 37 with following description of goods:
Construction services
Mining extraction, oil and gas drilling
Construction of manufacturing and industrial buildings
Aviation infrastructure construction
Building, construction and demolition
Civil engineering construction
Civil engineering demolition
Civil engineering [construction] consultancy
Heavy engineering construction
Rental of construction equipment
Industrial construction
Installation of oil refineries
Oil pipeline construction
Pipeline construction and maintenance
Underground construction
Infrastructure construction
Construction of public works, of public facilities of bridges, of chemical plants, of exploitation platforms, of prospecting platforms, of harbours, of private housing, of power plants, of hydroelectric factories, of geothermal power installations, of nuclear power plants, of oil and gas storage installations, of pipelines, of exploitation pipelines
Construction of railways, of roads, of airports, of sewerage systems, of tunnels
Construction of structures for the transportation crude oil
Construction supervision
Consultancy and information services relating to construction
Provision of construction information
Oil-field exploitation for the extraction of oil
Oil pumping and extraction
Highway maintenance
Maintenance and repair of storage tanks
Installation, maintenance and repair of industrial pressure vessels
Repair or maintenance of waste crushing machines and apparatus
Services for the repair of heat exchangers
Repair of heat recovery apparatus
Development of land [construction]
Development of ports.
The mark was filed in class 38 with following description of goods:
Telecommunications services
Providing access to global computer networks, providing access to portals on the internet
Data transmission for archiving and information purposes
On-line information and information services with regard to telecommunications
Gathering and supplying of data, messages and general information with regard to telecommunications
Transmission of information in the field of construction services, installation and repair services
Transmission of information in the field of mining extraction, oil and gas drilling
Information services relating to telecommunications and satellite communications
Transmission and television and radio broadcasting, including radio, television and cable television programmes
Mobile telephone, fax, telex services
Providing access to global computer networks
Providing access to e-commerce platforms on the internet
Provision and rental of telecommunications facilities and equipment
Providing access to platforms and portals on the internet.
The mark was filed in class 39 with following description of goods:
Transport
Packaging and storage of goods
Travel arrangement
Booking of transport via global computer networks
Reservations of transport
Boat storage
Electricity distribution
Water supplying
Wrapping and packaging of goods
Transport brokerage
Transportation logistics
Airport services
Transport of building materials
Transportation of petroleum
Transport of oil
Transport by pipeline
Transportation of oil by pipeline
Transportation and storage of goods
Storage of fuel oil
Storage of energy and fuels
Provision of warehousing services and facilities
Tanker transport
Container storage
Consultancy services relating to storage
Fuel bunkering services [storage]
Pre-transit storage of cargo
Rental of space, structures, units and containers, for storage and transportation
Vehicle parking and storage
Warehouse storage services
Waste collection, disposal, removal, storage and transportation
Container transport services
Storage of goods
Storage of cargo
Port services [docking services].
The mark was filed in class 40 with following description of goods:
Recycling of waste and trash
Air purification and treatement of water
Printing services
Food and drink preservation
Rental of equipment for the treatment and transformation of materials, for energy production and for custom manufacturing
Custom construction of machines
Custom manufacture of steel construction elements
Generation of power
Consultancy services relating to the generation of electrical power
Refining of petroleum products
Oil refinery services
Processing of oil
Processing of chemicals and petrochemicals
Chemical treatment of waste products
Recycling and waste treatment
Soil, waste or water treatment services [environmental remediation services].
The mark was filed in class 41 with following description of goods:
Education
Providing of training
Entertainment
Sporting and cultural activities
Engineering training services
Provision of facilities for education, entertainment, sports and culture
Rental services relating to equipment and facilities for education, entertainment, sports and culture.
The mark was filed in class 42 with following description of goods:
Scientific and technological services and research and design relating thereto
Industrial analysis, industrial research and industrial design services
Quality control and authentication services
Design and development of computer hardware and software
Consultancy relating to technological services in the field of power and energy supply
Advisory services relating to the use of energy
Energy auditing
Scientific and industrial research in particular in the field of electricity
Design and development of energy distribution networks
Analysis of the structural behaviour of building materials
Construction design
Consultancy in the field of architecture and construction drafting
Design services for the construction industry
Development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam)
Development of construction projects
Technical project studies in the field of construction
Engineering
Engineering services
Engineering services for others
Engineering consultancy
Civil engineering
Civil engineering consultancy
Civil engineering planning services
Mechanical engineering
Levee engineering
Technical engineering
Structural engineering services
Architectural and engineering services
Petroleum exploration
Analytical services relating to the development of oil fields
Exploration services in the field of the oil, gas and mining industries
Technical design and planning of power stations
Safety testing of pressure vessels
Technical design and planning of pipelines for gas, water and waste water.
The mark was filed in class 43 with following description of goods:
Services for providing food and drink
Temporary accommodation
Providing food and drink catering services for fair and exhibition facilities
Hospitality, accommodation and lodgings
Hotel restaurant services
Booking of accommodation, rooms and restaurants
Providing and preparation of food and drink
Restaurant services for the provision of food and drink
Consultancy relating to cookery
Consultancy services relating to food
Rental of rooms for ceremonies
Providing rooms for conferences and various meetings
Rental of meeting rooms
Rental of transportable buildings
Rental of food service equipment.
The mark was filed in class 44 with following description of goods:
Medical services
Veterinary services
Hygienic and beauty care for human beings or animals
Agriculture, aquaculture, horticulture and forestry services
Services for the provision of medical facilities.
The mark was filed in class 45 with following description of goods:
Legal services
Security services for the physical protection of tangible property and individuals
Information services relating to manufacturing standards
Security services
Security consultancy
Security control of persons and luggage in airports
Airport security services
Security assessment of risks
Safety, rescue, security and enforcement services.