The trademark yello was filed by Yello Strom GmbH, a corporation established under the laws of the Federal Republic of Germany (the "Applicant"). The application was published for oppositions on November 23, 2003, and received undefined oppositions.
Opposition Proceedings
There are undefined oppositions were filed:
The first opposition filed on February 23, 2004 by DTM Deutsche Tele Medien GmbH on (a) Likelihood of confusion, (b) Unfair advantage and detriment to distinctiveness or repute. the opponent was represented by BIRD & BIRD LLP and its proceedings were handled in German
The second opposition filed on February 23, 2004 by null on (a) Identity of marks and Goods and Services, (b) Likelihood of confusion. the opponent was represented by OFFICE KIRKPATRICK N.V./S.A. and its proceedings were handled in English
The third opposition filed on February 23, 2004 by Yell Limited on (a) Identity of marks and Goods and Services, (b) Likelihood of confusion, (c) Unfair advantage and detriment to distinctiveness or repute. the opponent was represented by BOULT WADE TENNANT LLP and its proceedings were handled in English
The fourth opposition filed on February 23, 2004 by Deutsche Post AG on Likelihood of confusion. the opponent was represented by LINKLATERS and its proceedings were handled in German
The fifth opposition filed on February 2, 2004 by null on Likelihood of confusion. the opponent was represented by HAUCK PATENTANWALTSPARTNERSCHAFT MBB and its proceedings were handled in German
The application was filed in German, and German was also language of all opposition proceedings (English was selected as the second language).
Cancellation Proceedings
A total of undefined cancellation proceedings were initiated against the trademark registration in 2012.The first Cancellation was filed by Telenet BVBA (represented by ???) on September 15, 2013 and Final decision on costs – Request withdrawn.The second Cancellation was filed by Snap Inc. (represented by ???) on November 13, 2019 and Final decision on costs – Request withdrawn.
Two renewals of the trademark were recorded, one on December 18, 2012, and the other one on April 3, 2022.
Appointment and Replacement of representative of the trademark registration was recorded on July 8, 2004. Change of name and professional address of the trademark registration was recorded on July 8, 2007. A transfer of the trademark registration was recorded on August 11, 2011. Application for revocation or for a declaration of invalidity of the trademark registration was recorded on December 6, 2012. Change of name and address of the trademark registration was recorded on February 3, 2013. Decisions on applications for revocation or for a declaration of invalidity of the trademark registration was recorded on September 18, 2013. Change of name and professional address of the trademark registration was recorded on September 28, 2014. Change of name and address of the trademark registration was recorded on February 17, 2015. Declaration under Art.28(8) EUTMR of the trademark registration was recorded on January 4, 2017. Declaration under Art.28(8) EUTMR of the trademark registration was recorded on April 11, 2018. Change of name and professional address of the trademark registration was recorded on April 18, 2019. Application for revocation or for a declaration of invalidity of the trademark registration was recorded on July 16, 2019. Decisions on applications for revocation or for a declaration of invalidity of the trademark registration was recorded on November 26, 2019.
Goods And Services
The mark was filed in class 1 with following description of goods:
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry
The mark was filed in class 4 with following description of goods:
Industrial oils and greases
Lubricants
Dust absorbing, wetting and binding compositions
Fuels (including motor spirit) and illuminants
Candles and wicks for lighting.
The mark was filed in class 7 with following description of goods:
Machines and machine tools
Motors and engines (except for land vehicles)
Machine coupling and transmission components (except for land vehicles)
Agricultural implements other than hand-operated
Incubators for eggs.
The mark was filed in class 9 with following description of goods:
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments
Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity
Apparatus for recording, transmission or reproduction of sound or images
Magnetic data-carriers, recording discs
Automatic vending machines and mechanisms for coin-operated apparatus
Cash registers, calculating machines, data processing equipment and computers
Webpads
Information technology equipment
Equipment, hardware, software for the remote operation and remote control of household and garden appliances and devices
Data carriers containing technical and commercial data relating to used vehicles
Equipment, hardware, software and services for detecting functional defects (including by means of remote diagnosis), for transmitting data relating to these functional defects and for rectifying these functional defects in household and garden appliances and devices
Fire-extinguishing apparatus
Alarms
Home security installations, equipment and devices, alarm door locks
Burglar alarm installations and other equipment and installations for crime prevention and for deterring and identifying criminals
Security cameras
Photovoltaic installations
Electronic hotel guides (software)
Animated cartoons
Attracting and killing insects (Electric devices for -)
Cigar lighters for automobiles
Cleaning apparatus for phonograph records
Containers for contact lenses
Door closers, electric
Door openers, electric
Electric arc cutting apparatus
Electric arc welding apparatus
Electric welding apparatus
Electronic publications [downloadable]
Electroplating apparatus
Eyeglass cases
Eyeglass chains
Eyeglass cords
Eyeglass frames
Flat irons, electric
Galvanizing apparatus
Hair-curlers, electrically heated
Lift operating apparatus
Magnets
Magnets (Decorative -)
Make-up removing appliances, electric
Mouse pads
Sealing plastics (Electrical apparatus for -) [packaging]
Soldering apparatus, electric
Soldering irons, electric
Spectacle cases
Spectacle frames
Wrist rests for use with computers.
The mark was filed in class 11 with Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
The mark was filed in class 12 with following description of goods:
Vehicles
Apparatus for locomotion by land, air or water
Air bags [safety devices for automobiles]
Air pumps [vehicle accessories]
Anti-glare devices for vehicles
Anti-skid chains
Anti-theft alarms for vehicles
Anti-theft devices for vehicles
Automobile bodies
Automobile chains
Automobile chassis
Automobile hoods
Automobile tires [tyres]
Axle journals
Axles for vehicles
Balance weights for vehicle wheels
Bands for wheel hubs
Baskets adapted for cycles
Bicycle stands
Boat hooks
Bodies for vehicles
Bogies for railway cars
Brake linings for vehicles
Brake segments for vehicles
Brake shoes for vehicles
Brakes for vehicles
Buffers for railway rolling stock
Bumpers for automobiles
Caps for vehicle petrol [gas] tanks
Casings for pneumatic tires [tyres]
Casters for trolleys [vehicles] [carts (Am)]
Cleats [nautical]
Clutches for land vehicles
Connecting rods for land vehicles, other than parts of motors and engines
Couplings for land vehicles
Crankcases for land vehicle components, other than for engines
Cranks for cycles
Cycle bells
Cycle brakes
Cycle chains
Cycle frames
Cycle handle bars
Cycle hubs
Cycle mudguards
Cycle pumps
Cycle rims
Cycle saddles
Cycle spokes
Cycle stands
Davits for boats
Disengaging gear for boats
Doors for vehicles
Dress guards for bicycles, cycles
Driving chains for land vehicles
Driving motors for land vehicles
Ejector seats for aircraft
Fenders for ships
Freewheels for land vehicles
Funnels for locomotives
Funnels for ships
Gear boxes for land vehicles
Gearing for land vehicles
Gears for cycles
Head-rests for vehicle seats
Hoods for vehicle engines
Hoods for vehicles
Horns for vehicles
Hub caps
Hubs for vehicle wheels
Hydraulic circuits for vehicles
Inclined ways for boats
Inner tubes (adhesive rubber patches for repairing -)
Inner tubes for bicycles, cycles
Inner tubes for pneumatic tires [tyres]
Jet engines for land vehicles
Luggage carriers for vehicles
Luggage nets for vehicles
Mine cart wheels
Motors for cycles
Motors for land vehicles
Motors, electric, for land vehicles
Mudguards
Oars
Paddles for canoes
Panniers adapted for cycles
Pedals for cycles
Portholes
Propulsion mechanisms for land vehicles
Pushchair covers
Pushchair hoods
Railway couplings
Rearview mirrors
Reduction gears for land vehicles
Repair outfits for inner tubes
Reversing alarms for vehicles
Rowlocks
Rudders
Saddle covers for bicycles or motorcycles
Saddles for bicycles, cycles or motorcycles
Safety belts for vehicle seats
Safety seats for children, for vehicles
Screw-propellers
Screw-propellers for boats
Screws [propellers] for ships
Sculls
Seat covers for vehicles
Security harness for vehicle seats
Ships' hulls
Ships' steering gears
Shock absorbers for automobiles
Shock absorbing springs for vehicles
Ski carriers for cars
Sleeping berths for vehicles
Spars for ships
Spoke clips for wheels
Steering wheels for vehicles
Studs for tires [tyres]
Sun-blinds adapted for automobiles
Suspension shock absorbers for vehicles
Tailboard lifts [parts of land vehicles]
Timbers [frames] for ships
Tipping apparatus, parts of trucks and waggons
Tipping bodies for lorries [trucks]
Tires (flanges of railway wheel -)
Tires (non-skid devices for vehicle -)
Tires for bicycles, cycles
Tires for vehicle wheels
Tires, solid, for vehicle wheels
Torque converters for land vehicles
Torsion bars for vehicles
Traction engines
Trailer hitches for vehicles
Transmission chains for land vehicles
Transmission shafts for land vehicles
Transmissions, for land vehicles
Treads for retreading tires [tyres]
Treads for vehicles [roller belts]
Tubeless tires [tyres] for bicycles, cycles
Turbines for land vehicles
Turn signals for vehicles
Undercarriages for vehicles
Upholstery for vehicles
Valves for vehicle tires [tyres]
Vehicle bumpers
Vehicle chassis
Vehicle covers [shaped]
Vehicle running boards
Vehicle seats
Vehicle suspension springs
Vehicle wheel rims
Vehicle wheel spokes
Vehicle wheel tires [tyres]
Vehicle wheels
Wheels for bicycles, cycles
Windows for vehicles
Windscreen wipers
Windscreens
Direction indicators for bicycles, cycles, etc.
The mark was filed in class 35 with following description of goods:
Organisation and facilitation of the short-term provision of installation services, repair services, craft services, plant engineering services, key services, caretaker services, housekeeping services, gardening services, services in the field of housing and real estate management, building construction and real estate affairs, technical and commercial real estate management (including outside normal working hours, weekends and public holidays), in particular in cases of emergency, including agency and information services for the aforesaid services, including online
Purchasing consultancy, including online
Agencies for craftsmen, including online
Concluding and handling of contracts for the buying and selling of household and garden appliances, including via online shops
Collating and systematic ordering of data in a computer database
Collating and compiling subject-related press articles.
The mark was filed in class 36 with Housing and real estate management.
The mark was filed in class 37 with following description of goods:
Building construction, repair and installation services
Installation, maintenance, servicing, renovation, modernising, extension, conversion, remediation and repair of waste water and fresh water installations, conduits and other installations for the supplying or drainage thereof, sanitary facilities, heating installations and parts therefor, technical equipment, household appliances, electronic entertainment apparatus and information technology equipment, and photovoltaic installations, supply lines (including for gas and electricity), buildings and parts therefor
Craft services
Technical services for installations, in particular construction, assembly, maintenance, servicing and repair services
Services for detecting functional defects (including by means of remote diagnosis) in household and garden appliances and devices, for transmitting data relating to these functional defects and for rectifying these functional defects
Repair of mobile phones
Network management, namely installation and maintenance of network systems, installation services for house automation
Caretaker services, namely maintenance, safeguarding and care of residential buildings and industrial buildings.
The mark was filed in class 38 with following description of goods:
Telecommunications, in particular electronic advertising
Providing access to a global computer network
Providing telecommunications connections to a global computer network
Teletext services
Telephone services
Radio and television broadcasting
Telephone services
Cable television broadcasting services
Communications by optical fibre networks
Cabling, routing and connection services for telecommuications
Cellular telephone communication
Collection and supply of news
Message sending
Computer-aided transmission of messages and images
Electronic mail
Rental of message sending apparatus
Paging services (radio, telephone or other means of electronic communication)
News agencies
News agencies
Radio broadcasting
Satellite transmission
Telephone services
Telegraph services
Communications by telegraph
Telegram services
Transmission of telegrams
Information about telecommunications
Teleconferencing services
Facsimile transmission
Rental of fax machines
Rental of modems
Telephone rental services
Rental of telecommunications apparatus
Service hotlines
Rental of mobile phones and providing replacement mobile phones.
The mark was filed in class 39 with following description of goods:
Transport and logistics in the transport sector
Removal services, in particular rental of removal vehicles, providing furniture packers, assembly and disassembly of furniture
Logistics services with regard to removals
Delivery of goods of all kinds
Collection and repair of mobile phones.
The mark was filed in class 40 with Production of printed matter (printing) containing technical and commercial data relating to used vehicles.
The mark was filed in class 42 with following description of goods:
Scientific and technological services and research and design relating thereto
Industrial analysis and research services
Design and development of computer hardware and software
Legal services
Creating databases with search and retrieval facilities, containing technical and commercial information relating to used vehicles
Creating databases with search and retrieval facilities, containing news, business and commercial company information
Weather forecasting, including online.
The mark was filed in class 45 with following description of goods:
Personal and social services rendered by others to meet the needs of individuals
Housekeeping services in private households
Caretaker services, namely security services in residential buildings and industrial buildings
Security services for the protection of property and individuals