OPPOSITION No B 2 245 507
Digi International Inc., 1001 Bren Road East, Minnetonka, Minnesota 55343, United States of America (opponent), represented by V.O., Carnegieplein 5, 2517 KJ The Hague, the Netherlands (professional representative)
a g a i n s t
Omnicloud AB, Munkbron 5, 111 28 Stockholm, Sweden (applicant), represented by Jacobacci & Partners S.p.A., Corso Emilia, 8, 10152 Turin, Italy (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 245 507 is upheld for all the contested goods and services.
2. European Union trade mark application No 11 802 832 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 802 832. The opposition is based on international trade mark registration No 962 735 designating the European Union. The opponent invoked Article 8(1)(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 goods and services
The goods on which the opposition is based are the following:
Class 9: Computer hardware and computer software used to develop network-enabled embedded product solutions.
The contested goods and services are the following:
Class 9: Computer software development tools.
Class 42: Software as a service (SaaS), web hosting services.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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
The contested computer software development tools include, as a broader category, or overlap with the opponent’s computer software used to develop network-enabled embedded product solutions. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested services in Class 42
The contested software as a service (SaaS), web hosting services is a form of cloud computing in which software is hosted on a central server and end users access it remotely (www.collinsdictionary.com). This service and the opponent’s computer software used to develop network-enabled embedded product solutions can coincide in providers and distribution channels and they target the same consumers. Therefore, they are considered similar to a low degree.
- 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 a low degree are directed at the public at large and business customers with specific professional knowledge or expertise in the IT field.
The degree of attention may vary from average to high, depending on the specialised nature of the goods or terms and conditions of the purchased services, the frequency of purchase and their price.
- The signs
| DIGI JUMPSTART KITS | JUMPSTARTER |
|
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Given that the marks in conflict are made up of English terms, the Opposition Division finds it appropriate to focus the decision on the English-speaking part of the relevant public.
Both the earlier mark and contested sign are word marks and, therefore, they have no elements that could be considered clearly more dominant than other elements.
The coinciding verbal elements ‘JUMPSTART’ / ‘JUMPSTART(ER)’ will be understood in the part of the EU where consumers have a good knowledge of English as referring to something that gives an added impetus to something that is proceeding slowly or is at a standstill. It cannot be excluded that these words may suggest the possibility of helping users to start their computers if they run into unexpected problems. However, this would be a remote connection with the relevant goods and services, therefore, they have a normal degree of distinctiveness and, in any case, the word ‘JUMPSTART’ would be the more distinctive element of the earlier mark as ‘DIGI’ and ‘KIT’ are generic terms (non-distinctive) commonly used as referring to as ‘digital’ and as ‘a set of articles or equipment needed for a specific purpose’, respectively.
The same reasoning could be applied to the components ‘Digi Jumpstart kit’ which will be understood as a digital set of articles or equipment needed for giving an added impetus to something that is proceeding slowly or is at a standstill.
Visually and aurally, the signs coincide in ‘JUMPSTART’. However, they differ in the words ‘DIGI’ and ‘KITS’ of the earlier mark and the last two letters ‘-ER’ of the second word of the contested sign. However, the differences lying in the generic terms ‘DIGI’ and ‘KITS’ are not able to counteract the impression of overall similarity between the elements ‘JUMPSTART’ and ‘JUMPSTARTER’.
Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘something that gives an added impetus’, the signs are conceptually similar at least to an average degree as the differentiating elements included in the earlier mark ‘DIGI’ and ‘KITS’ convey concepts that have a secondary impact on consumers.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 in relation to any of the services at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some generic elements, non-distinctive as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods and services are partly identical and partly similar to a low degree and are directed to the public at large and professionals whose degree of attention may vary from average to high. The distinctiveness of the earlier mark is normal.
The signs are visually, aurally and conceptually similar to an average degree, to the extent that the contested sign fully reproduces the second verbal element of the earlier mark ‘JUMPSTART’, the more distinctive. Although in the contested sign such element contains two additional letters ‘-ER’, such slight difference is not sufficient to differentiate the signs and may be easily overlooked by consumers due to their position at the end of the second word. The rest of the differences between the signs are based on two additional words ‘DIGI’ and ‘KITS’ in the earlier mark, considered generic, non-distinctive in respect of the relevant goods and services.
Moreover, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).
Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49), being the earlier mark perceived as the digital version of the contested sign.
Considering all the above, there is a likelihood of confusion because the differences between the signs are confined to secondary elements.
Therefore, the opposition is well founded on the basis of the opponent’s trade mark, and the contested sign must be rejected for all the contested goods and services even similar to a low degree.
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
| Francesca CANGERI
SERRANO |
María Clara
IBÁÑEZ FIORILLO |
Pierluigi M.
VILLANI |
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.