The trademark T Telefónica was filed by TELEFONICA, S.A., a corporation established under the laws of the Kingdom of Spain (the "Applicant"). The application was published for oppositions on May 25, 2021, and received one opposition filed on August 18, 2021 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 August 18, 2021
It was designated 'Basic Application' for International Application 1605651 at the World Intellectual Property Organization (WIPO).
The application was filed in Spanish, and Spanish was also language of all opposition proceedings (English was selected as the second language).
Change of name and professional address of the trademark registration was recorded on July 7, 2022. Change of name and professional address of the trademark registration was recorded on July 18, 2022.
Goods And Services
The mark was filed in class 9 with following description of goods:
The mark was filed in class 14 with following description of goods:
Precious metals and their alloys
Jewellery, precious and semi-precious stones
Horological and chronometric instruments
Watches incorporating a telecommunication function
Pins [jewellery].
The mark was filed in class 16 with following description of goods:
Computer manuals
Printed manuals
Periodicals
Paper and cardboard
Printed matter
Bookbinding material
Photographs [printed]
Stationery and office requisites (except furniture)
Drawing materials and materials for artists
Teaching materials [except apparatus]
Printed publications.
The mark was filed in class 25 with Clothing, footwear, headgear and Sportswear..
The mark was filed in class 28 with following description of goods:
Games and playthings
Gymnastic and sporting articles
Decorations for Christmas trees
Sporting articles and equipment.
The mark was filed in class 35 with following description of goods:
Advertising, marketing and promotional services
Promotion of goods and services through sponsorship
Providing consumer product information
Providing commercial information to consumers
Computerized file management
Compilation of information into computer databases
Business assistance, management and administrative services
Business analysis, research and information services
Computerised data verification
Collection of data, Data processing and Management of data
Business consultancy and advisory services
Arranging subscriptions to telephone services
Call handling services
Telephone billing
Telephone exchange services
Wholesaling, retailing and sale via global computer networks, in relation the following goods, Telephone apparatus, Sound, image or data recording apparatus, Apparatus for broadcasting sound, data or images, Sound, image or data processing apparatus, sound, image or data reproduction apparatus, Magnetic data carriers, Computer software, Computer hardware, Computers, Digital recording devices, Data recorded in electronic form (downloadable), printed publications, Downloadable electronic publications, Digital tablets, Tablet computers and USB devices
Wholesaling, retailing and sale via global computer networks, in relation the following goods, Clocks and watches and Chronometric instruments, Stationery items, Print shop products, Instructional and teaching materials, Games and playthings, video game apparatus, Retailing of gymnastic and sporting articles, Sporting equipment and articles
Wholesaling and retailing services and Via global information networks, in relation the following goods, Articles of luggage, Bags, wallets, purses and Carrying cases of other kinds, Articles of clothing, footwear and headgear, jeweler goods, Clocks and watches, Stock pins
Provision of on-line commercial information
Information services relating to businesses
Providing business marketing information
Providing business information by way of computer terminals
Online business information.
The mark was filed in class 36 with following description of goods:
Financial, monetary and banking services
Insurance services
Financial sponsorship
Charge card services
Issue of phone card services
Provision of prepaid cards and tokens
Providing financing to emerging and start-up companies
Venture capital funding services to emerging and start-up companies
Venture capital financing
Venture capital services
Venture capital management
Acquisition of company shares
Financial analysis
Arranging the provision of finance
Credit card and payment card services, bank cards, credit cards, automatic charge cards and electronic payment cards, issuing of electronic payment cards associated with incentive and reward schemes, management of payments in relation to credit cards
Underwriting services.
The mark was filed in class 37 with following description of goods:
Installation and repair of computer hardware and telecommunications apparatus
Advisory services relating to the installation of telephone equipment
Installation of telephone lines
Telecommunication wiring
Installation and repair of telecommunications hardware
Maintenance and repair of telecommuncations networks, apparatus, and instruments
Installation of wireless telecommunications equipment and wireless local area networks
Renovation, repair and maintenance of electrical wiring
Maintenance, repair and updating of computer hardware, peripherals
Installation, maintenance, repair of security systems, Machinery installation, maintenance and repair, Installation, maintenance and repair of electronic appliances.
The mark was filed in class 38 with following description of goods:
Telecommunication and telephone services
Leasing of telephone circuits
Electronic transmission of data and documents via computer terminals and electronic devices
Webcasting services
Broadband services
Interactive broadcasting and communications services
Routing and link-up for telecommunications
Communications by fibre optic networks
Communications by computer terminals
Computer aided transmission of messages and images
Providing access to an Internet portal
Mobile telecommunication network services
Transmission of messages by telephone and facsimile
Videoconferencing services
Recording, filtering and barring of calls
Chatroom services and operation of chatrooms
Providing internet chatrooms
Providing access to weblogs
Provision of electronic communication links
Electronic messaging
Providing access to commercial transactions via electronic communications networks
Broadcasting and transmission of information via networks or the Internet
Providing telecommunication connections to the Internet or data bases
Broadcasting services
Television and radio broadcast services
Internet access services
Email and text messaging service
Information services provided by means of telecommunication networks relating to telecommunications
Services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet
Rental of telecommunications equipment, including telephones
Rental of telecommunication facilities
Providing communication services through the use of phone cards or debit cards
Information about telecommunication
Provision of access to content, websites and portals
Providing users with secure remote access via the internet to private computer networks.
The mark was filed in class 41 with following description of goods:
Entertainment services
Entertainment services
Sporting and cultural activities
Education and instruction
Provision of radio and television entertainment services
Television, radio and film production
Provision of non-downloadable films and television programs via pay-per-view television channels
Television program syndication
Hire of televisions
Television and radio programming [scheduling]
Production of sporting events for television
Television viewing guide services
Audio, film, video and television recording services
Hosting [organising] awards relating to television
Provision of non-downloadable films and television programs via a video-on-demand service
Provision of multimedia entertainment programs by television, broadband, wireless and on-line services
Arranging of contests
Organisation and conducting of colloquiums, conferences, seminars, symposiums and congresses
Arranging of award ceremonies
Organising of sporting activities and of sporting competitions, Conducting of sports events and competitions, Promotion of sports competitions and events
Providing online electronic publications, not downloadable
Providing electronic publications
Electronic game services provided by means of the internet
Online gaming services on a computer network.
The mark was filed in class 42 with following description of goods:
Scientific and technological services, as well as related research and design services
Industrial analysis, industrial research and industrial design services
Quality control and authentication
Design and development of computer hardware and software
IT security, protection and restoration
Data protection services
Creating and maintaining bespoke technology platforms and websites
Operating search engines
Providing online assistance for computer software users
Computer security system monitoring
Hosting platforms on the Internet
IT security, protection and monitoring
Research and consultancy relating to IT security, protection and monitoring
Advisory services relating to computer hardware
Design of storage systems
Consultancy in the field of computer security
IT protection
Computer security services (repair and maintenance services for software programming and installation)
Computer security services (test and risk assessment for computer networks)
Data security consultancy
Software as a service [SaaS]
Rental of computer software
IT consultancy, advisory and information services
Internet security consultancy
Data security consultancy
Research in the field of information technology
IT project management
Computer software consultancy
Installation, maintenance, repair and servicing of computer software.
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
Licensing of intellectual property and copyright
Licencing of computer software (legal services)
Trademark monitoring [legal services]
Monitoring electronic messages and pages from subscribers and notifying emergency services
Location services using data from electronic tracking devices
Online social networking services
Providing a social networking website for entertainment purposes
Monitoring, analyzing, authenticating, and validating computerized data, computer databases, and computer systems for security and data privacy purposes, and detecting, reporting on, and providing safeguards against suspicious activity
Providing a website featuring information on security and data privacy