OPPOSITION No B 2 719 840

It’s Learning AS, P.O Box 2686 Møhlenpris, 5836 Bergen, Norway (opponent), represented by Patrade A/S, Fredens Torv 3A, 8000 Aarhus C, Denmark (professional representative)

a g a i n s t

It’s Perfect International B.V., Kerklaan 9B, 1251 JR Laren, the Netherlands (applicant), represented by IP Lawyers, Willemsparkweg 34, 1071 HG Amsterdam, the Netherlands (professional representative).

On 24/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 719 840 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 167 489 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 167 489. The opposition is based on, inter alia, international trade mark registration No 1 100 210 designating the European Union. The opponent invoked Article 8(1)(a) and (b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 100 210 designating the European Union.

1. The goods and services

On 23/09/2016, the opponent filed a declaration in accordance with Article 28(8) EUTMR stating that it was its intention, on the date of designation in the European Union of international trade mark registration No 1 100 210, to seek protection in respect of services beyond those covered by the literal meaning of the class heading of Class 41. This declaration was examined by the Office, and the amended list of goods and services has become final.

Therefore, the goods and services on which the opposition is based are the following:

Class 9: 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; fire-extinguishing apparatus; game apparatus, for use on its own or together with an external screen or monitor; computer game software; computer software; computer platforms.

Class 38: Telecommunications; electronic bulletin boards (telecommunications); communication by computer terminals.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; education information; electronic desktop publishing; entertainment information; layout services, other than for advertising purposes; providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; sign language interpretation; translation.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; design, development, maintenance and operation of computer platforms and data communication platforms; maintenance of computer software; creation and maintenance of web sites for others; rental of computer software; hosting computer sites (web sites).

The contested goods and services are the following:

Class 9: 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; Fire-extinguishing apparatus; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Recorded computer programs; Computer software; Mobile applications; Data, documents, information, photographs, video, audio, text and other media or multimedia, all being electronically recorded or downloadable from the internet or other communications networks; Electronic publications stored on computer media; Downloadable electronic publications.

Class 38: Telecommunications; Transmission and connection services; Data transmission; Transferring, distribution, sending and receiving of data, messages, sounds, images and documents; Electronic transmission of digital files and other data; Communication services provided electronically; Providing access to telecommunication networks; Providing access to global computer networks and databases; Providing multiple-user access to global computer information networks; Providing access to platforms and portals on the Internet; Providing access to electronic information, communication and transaction platforms on the Internet; Providing access to online forums and chat rooms; Digital transmission of data via the Internet; Providing access to search engines; Providing of mobile and fixed telecommunication channels; Telephone services; Email services; Information and consultancy relating to the aforesaid services; All the aforesaid services whether or not via electronic channels, including the Internet.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Device, Development, Computer programming, The installation, Servicing, Updating, upgrading and Rental of software; hosting services and software as a service; Server and system management; Network management; Computer system analysis; Computers services; Computer programming; Computer program and document conversion service; Recovery of computer data; Copying of computer software; Computer system design; Securing computer systems and infrastructures; Transaction security services; Monitoring of computer systems by remote access; Analysis of telecommunication signals; Diagnosing computer software problems; hosting computer databases; Hosting of platforms and portals on the internet; Hosting electronic information, communication and transaction platforms on the internet; Hosting web sites; Creation (design and development) and maintenance of websites for others; Information and consultancy relating to the aforesaid services; The aforesaid services also via electronic channels, including the Internet.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

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; fire-extinguishing apparatus; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software are identically included in both lists of goods.

Given that software and computer programs are synonyms, and that mobile applications are a kind of software to be run on mobile devices such as smartphones or tablet computers, the contested recorded computer programs and mobile applications fall under or overlap with the broad category of the opponent’s computer software, to which they are thus identical.

As regards the contested compact discs, DVDs and other digital recording media, it is noted that digital recording media are not always magnetic. They can also be optical (e.g. DVD, CDs). On the other hand, magnetic data carriers are not always digital but can also be analogue. In the light of the above, it has thus to be considered that the broad category of the contested other digital recording media overlaps with the opponent’s magnetic data carriers, to which they are thus identical. Moreover, the contested compact discs, DVDs have the same nature, of data carriers, and, therefore, the same purpose, of recording or storing data, as the opponent’s magnetic data carriers. Furthermore, their producers and end users are the same. Moreover, to the extent that they are interchangeable, they are in competition. Therefore, they are highly similar to the opponent’s magnetic data carriers.

The contested data, documents, information, photographs, video, audio, text and other media or multimedia, all being electronically recorded or downloadable from the internet or other communications networks; electronic publications stored on computer media; downloadable electronic publications are similar to the opponent’s computer software, as they can coincide in producers, end users and distribution channels. Furthermore, they are complementary.

Contested services in Class 38

Telecommunications are identically contained in both lists of services.

Moreover, as regards the remaining contested services, it is recalled that telecommunications refers to the exchange of information by electronic and electrical means over a long distance.

Since the contested transmission and connection services; data transmission; transferring, distribution, sending and receiving of data, messages, sounds, images and documents; electronic transmission of digital files and other data; communication services provided electronically; providing access to telecommunication networks; providing access to global computer networks and databases; providing multiple-user access to global computer information networks; providing access to platforms and portals on the internet; providing access to electronic information, communication and transaction platforms on the internet; providing access to online forums and chat rooms; digital transmission of data via the internet; providing access to search engines; providing of mobile and fixed telecommunication channels; telephone services; email services; all the aforesaid services whether or not via electronic channels, including the internet are all services that refer to the exchange of information by electronic and electrical means over a long distance, they all fall under the broad category of telecommunications, to which they are, therefore, identical.

Furthermore, although the contested information and consultancy relating to the aforesaid services [whether or not via electronic channels, including the internet] do not fall under the broad category of telecommunications, both sets of services address the same public and the telecommunications providers usually also provide information and consultancy relating to telecommunications. Finally, they are distributed through the same channels. Therefore, they are similar.

Contested services in Class 42

In spite of slight differences in wording, scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; hosting web sites; creation (design and development) and maintenance of websites for others are identically contained in both lists of services.

The contested hosting services and software as a service; hosting of platforms and portals on the internet; hosting electronic information, communication and transaction platforms on the internet are equivalent or included in the opponent’s broad category hosting computer sites (web sites). Therefore, they are identical.

The contested computer system analysis; computer system design; securing computer systems and infrastructures; monitoring of computer systems by remote access; diagnosing computer software problems are specific activities that would typically be carried out when designing and developing computer hardware and software or when maintaining software.

Indeed, since a computer system is a basic, complete and functional computer, including all the hardware and software required to make it functional for any user, the Opposition Division considers that the contested computer system analysis; computer system design; securing computer systems and infrastructures; monitoring of computer systems by remote access are included in the broad category of design and development of computer hardware and software covered by the earlier mark and, therefore, identical. Moreover, taking into account that maintaining software implies carrying out activities such as diagnosing computer software problems, these contested services are included in and, therefore, identical to the opponent’s maintenance of computer software.

The contested computers services correspond to a broad category that includes the opponent’s design and development of computer hardware and software. Bearing in mind that the Office cannot dissect ex officio broad categories of contested services, the contested computers services are considered identical to the opponent’s design and development of computer hardware and software.

As regards the contested device, development, computer programming, the installation, servicing, updating, upgrading and rental of software, it is noted that the word ‘device’ is an obvious translation error. In the light of the description of such services in other official languages of the Office, it is clear that the applicant intended to seek protection for design, development, computer programming, the installation, servicing, updating, upgrading and rental of software.

In that connection, the Opposition Division notes that design, development, servicing, updating, upgrading and rental of software are covered as such or included in the opponent’s services of design and development of computer software; maintenance of computer software; rental of computer software. Therefore, they are identical. In addition, the activity of computer programming (listed twice) consists of designing and developing computer software. Therefore, these contested services are identical to the opponent’s design and development of computer software.

Moreover, although the contested installation of software is not included in the opponent’s broad category of design and development of computer software, the fact remains that these services are similar. Indeed, the professionals who design and develop computer software for a client might also install that software, so they are very likely to coincide in usual origins and distribution channels. Furthermore, they have the same nature, of IT services, and they target the same end users of computer software.

The contested server and system management; network management; analysis of telecommunication signals cannot be considered included in the opponent’s design and development of computer software and hardware. They are nonetheless similar, since they have the same nature, namely IT services, are usually provided by the same IT companies and target the same public.

The contested computer program and document conversion service; recovery of computer data; copying of computer software; transaction security services; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet are similar to design and development of computer software; maintenance of computer hardware and software, as they can coincide in producers, end users and distribution channels.

Finally, the contested hosting computer databases is also similar to the opponent’s hosting computer sites (web sites), as they have the same nature, namely hosting services, and similar purposes. Furthermore, they can coincide in producers, end users and distribution channels.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to various degrees are directed both at the public at large and at professionals in different fields.

The degree of attention of the average consumer may vary from average to high, depending on the technical level of the goods and services, the frequency of purchase and their price (05/05/2015, T-423/12, Skype, EU:T:2015:260, § 22; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27; 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The signs under comparison are both figurative marks consisting of the single word element ‘its’ in lower case letters and quite a standard typeface. The earlier mark’s verbal element is written in white and displayed on an orange background. The contested sign’s verbal element is written in black and on its left-hand side is a black hexagon device. The letter ‘s’ of the contested sign is incomplete.

The English-speaking part of the public will probably perceive the element that the signs have in common, ‘its’, as corresponding to the English possessive determiner, while, for the remaining part of the public, it has no meaning. In any event, as this element is not descriptive, allusive or otherwise weak in relation to the goods and services in question, it is distinctive for the whole public.

In both marks, the figurative elements will be perceived as decorative, so that their verbal element, ‘its’, is their most distinctive element. Neither of the marks has any element that could be considered clearly more dominant (visually eye-catching) than others.

Visually, the signs completely coincide in their verbal element, ‘its’. They differ in their stylisation and figurative elements. However, bearing in mind their decorative purpose, consumers will pay more attention to the word element of the marks in question.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs are aurally identical.

Conceptually, as explained above, the English-speaking part of the public in the relevant territory might perceive the verbal element as the possessive determiner. For this part of the public, the signs are conceptually identical.

For the remaining part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the degree of distinctiveness of the earlier mark must be seen as normal, despite the presence of decorative and less distinctive elements, as stated above.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods and services are identical and similar to varying degrees to the opponent’s goods and services. In addition, the degree of distinctiveness of the earlier mark is normal.

Taking account of the fact that the signs consist of an identical single word element, namely ‘its’, it is considered that the graphical differences they display are not sufficient to counteract the visual similarity, aural identity and, for part of the public, conceptual identity.

In particular, since even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54), it is likely that average consumers, relying on their imperfect recollection of the marks, will confuse the marks in question.

Considering all the above, there is a likelihood of confusion on the part of the public in the relevant territory.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 100 210. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the above mentioned earlier trade mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Zuzanna STOJKOWICZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.