OPPOSITION No B 2 754 607

Datamax System Holding AD, Ivan Vazov Str. 16, 1000 Sofia, Bulgaria (opponent), represented by Vasil Pavlov Pavlov, 1 Stefan Stambolov Blvd., floor 1, 1303 Sofia, Bulgaria (professional representative)

a g a i n s t

Patrick Knight, 3 Windmill Close, Ringwood  BH24 2DL, United Kingdom (applicant), represented by Trade Mark Direct,  4 Grove Park Studios, 188-192 Sutton Court Road, Chiswick, London W4 3HR, United Kingdom (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 754 607 is partially upheld, namely for the following contested goods and services:

Class 9:        Downloadable software and application software and computer software platforms for use in relation to website design, development, hosting, updating, maintenance, design, customisation, display and content management and in relation to database management and creating searchable databases of information and data and in relation to business services, namely, detection, tracking, monitoring, alerting, removal and blocking of online advertisements and advertisement blockers for others; downloadable electronic publications and reports; electronic databases and databanks.

Class 36:        Payment processing and administrative services; automated payment services; electronic funds transfer services; provision of secure credit card and other payments on the Internet and other telecommunications media; clearing and reconciling financial transactions via electronic communication networks; credit card processing; processing and transmission of bills and payments; electronic payment services; pre-payment card services; electronic purse card services; information, advice and consultancy in relation to all the aforesaid services.

Class 38:        Providing access to and leasing access time to computer databases and databanks; electronic exchange of data stored in databases accessible via telecommunication networks; computer aided transmission of messages and images; providing user access to a global computer network; providing internet portals, on-line chat rooms, online forums and electronic bulletin boards for transmission of messages among users; provision of access to data or documents stored electronically in on-line files for remote consultation; services for internet users to upload, post, display, tag, and electronically transmit data, on-line publications and documentation and information; broadcasting of audiovisual and multimedia content via the Internet; telecommunication services for the electronic transmission, transfer and processing of financial data and payments; secure data transmission services (including by electronic mail and mobile systems); providing online communications links which transfer web site users to other local and global web pages; information, advice and consultancy relating to all the aforesaid services.

Class 42:        Computer software design, development, customisation, deployment and consultancy; installation, maintenance and repair of computer software; website design, development, hosting, updating, maintenance, customisation and display; computer and information technology support and consultancy services; providing temporary use of on-line non-downloadable software, application software and computer software platforms for use in relation to website design, development, hosting, updating, maintenance, design, customisation, display and content management; providing temporary use of on-line non-downloadable software, application software and computer software platforms for use in relation to database management and creating searchable databases of information and data; providing temporary use of on-line non-downloadable software, application software and computer software platforms for use in relation to business services, namely, detection, tracking, monitoring, alerting, removal and blocking of online advertisements and advertisement blockers for others; design and development of information technology systems, applications and processes; integration of computer systems and networks; computer, website and data security services; integration and linking of computer systems, platforms, software applications, databases and networks; encryption, decryption and authentication of information, messages and data; computerised analysis of data; information, advice and consultancy in relation to all the aforesaid services.

2.        European Union trade mark application No 15 223 589 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 223 589, namely against some of the services in Class 35 and all of the goods and services in Classes 9, 36, 38 and 42. The opposition is based on, inter alia, Bulgarian trade mark registration No 91 439. 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 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 Bulgarian trade mark registration No 91 439.

1. The goods and services

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; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; computer software; Fire-extinguishing apparatus; USB flash-drives; Intercommunication apparatus; Distance recording apparatus; Fare collecting machines; ATM (automated-teller machines); Voucher reading apparatus; bank cards [magnetic]; automated-teller machines (АТМ); coinless mechanisms; Ticket dispensers; counters; Money counting and sorting machines; time cards [encoded]; Magnetic bracelets with encoded identification data; bar-code decoding devices; Counterfeit [false] money detectors; pocket calculators; Personal digital assistants [PDA]; disks [magnetic]; Disk drives for computers; DNA chips; Monitor displays; Electro-dynamic apparatus for the remote control of signals; Electro-dynamic devices for the remote control of signals; electronic notepads; Electronic pocket translators; Electronic pocket transmitters; electronic tags for goods; electronic cards [encoded]; Electronic cash registers; Electronic coding apparatus; Electron tubes; Electron tubes [radio]; Electronic magnetic recording media; Electronic pens; Electronic pens [visual display units]; Electronic publications, downloadable; Light-emitting electronic pointers; Electronic notice boards; Electronic payment terminal; Electronic data processing equipment; coin-operated musical apparatus (Juke boxes); Coin-operated barriers and gates for car parks or parking lots; Coin-operated mechanisms for television sets; recorded disks; sound recording disks; sound recording strips; sound recording carriers; Identification labels [magnetic]; Identification labels [encoded]; Identification strips [encoded]; Identification strips [magnetic]; Identification threads for electric wires; Identification sheaths for electric wires; Data processing apparatus; Interactive terminals; internet servers; Interfaces for computers; Information carriers [electric or electronic]; Information carriers [encoded or magnetic]; Cash cards [encoded]; Cash cards [magnetic]; Cards encoded to access computer software; Cards bearing electronically recorded data; Cards with integrated circuits, smart cards; cash registers; Point of sale apparatus; Keyboard terminals; encoded bank cards; encoded disks; encoded cards; Encoded cards for use in point of sale transactions; Encoded cards for use in relation to the electronic transfer of funds; Encoded electronic chip cards; encoded plastic cards; encoded telephone cards; encoded magnetic cards; Compact disc recorders; Compact disc players; compact disks [audio-video]; compact disks [read-only]; computers; computer software [recorded]; computer software for generating access passwords; Computerised personal organisers; Computer interface apparatus; Notebook computers; computer disks; computer cards; computer keyboards; Peripherals adapted for use with computers; Computer stylus; computer programs [software, downloadable]; computer programs, recorded; computer terminals; magnetic strip credit cards; laptops; Video tapes; Head cleaning tapes [recording]; Identity cards, magnetic; magnets; magnetic encoding devices; magnetic encoded cards; magnetic credit cards; magnetic strips; Magnetic tape units for computers; magnetic data carriers; Magnetically encoded bank cards; Magnetically encoded debit cards; Magnetically encoded credit cards; Magnetically encoded payment cards; Magnetic wires; tape recorders; Data processing apparatus; invoicing machines; Mechanised coding apparatus; Counter-operated apparatus (Mechanisms for -); Mechanisms for coin-operated apparatus; microcomputers; microprocessors; microphones; Mouse [data processing equipment]; mobile computers; mobile phones; modems; Parking meters; monitors [computer hardware]; monitors [computer software]; Downloadable music files; Computer operating programs, recorded; optical disks; Optical recording media; optical cabels; optical cards; optical data carrires; Optical character readers; Optical disk drives; personal computers; Personal digital assistants; printed debit cards [encoded]; printed cards [magnetic data carriers]; DVD players; Mouse mats [for computers]; Wrist rests for use with computers; portable media players; portable radio phones [walkie-talkie]; portable stereo cassette players and compact disc players; blank recording disks; blank computer disks; blank magnetic disks; blank magnetic data carriers; blank optical disks; electronic signal transmitters; Transmitting sets [telecommunication]; printed bank cards [encoded]; computer printers; wires, electric; Computer game programmes; processors [Central processing units]; data processors; work stations [computer apparatus]; Demagnetizing apparatus for magnetic tapes; Hand-held electronic dictionaries; data processing systems; scanners [data processing devices]; barcode scanners; smart cards [cards with integrated circuits]; Abacuses; circular slide rulers; Adding machines Couplers [data processing equipment]; computer network servers; taximeters; word processors; barcode terminals; data input terminals; data terminals; Terminals for electronically processing credit card payments; Terminals for electronic payments; credit card terminals; data processing terminals; Totalizators [counters]; Trading cards [magnetic]; data processing apparatus; computer memory apparatus; money sotring apparatus; Information storage apparatus [electric or electronic]; downloadable image files; flash memory (portable data storage devices); floppy disks; central processing units [processors]; readers [data processing apparatus]; barcode readers; magnetically encoded card readers; chips [integrated circuits]; Encoded tapes.

Class 36:        Insurance services; Financial affairs; Monetary affairs; Real estate affairs; Automated banking services relating to        credit card transactions; Automated banking services relating to charge card transactions; Home banking;        Banking; Stock exchange quotations; Securities brokerage; Brokerage; Mutual funds; Fiscal assessments; Deposits of securities; Electronic funds transfer; Electronic banking services; Electronic banking via a global computer network [internet banking]; Electronic debit card transactions; Electronic credit card transactions; Issuance of securities; Telebanking; Issuance of vouchers; Issuance of tokens, coupons and vouchers of value; Issuance of credit cards; Issuance of travelers' checks; Fund investments; Issuing stored value cards; Internet banking; Bank account information services; Clearing-houses, financial; Clearing, financial; Computerised banking services; Computerised financial services; Computerised financial services for retail businesses; Credit card advisory services; Risk management consultancy [financial]; Financing services for companies; Corporate financing; Credit leasing; Business liquidation services, financial; International banking; Fundraising; Charitable fundraising; Independent financial planning advice; Currency trading and exchange services; Currency exchange; Processing electronic payments made through prepaid cards; Credit card transaction processing services; Processing of payments in relation to credit cards; Processing credit card payments; Handling of standing orders; Processing payments made by credit cards; Processing debit card transactions for others; Processing charge card transactions for others; Processing credit card transactions for others; Bank account and savings account services; Debit card services; Safe deposit services; Credit card services; Credit card and payment card services; Retirement payment services; Current account facilities;On-line banking; On-line banking services; On-line realtime currency trading; Credit rating; Charitable fund raising; Provision of information relating to credit card transactions; Rental, hire and lease of equipment for processing financial cards; Instalment loans; Lending against security; Mortgage banking; Lease-purchase financing; Financial assessment of damages; Antique appraisal; Jewellery [jewelry (Am.)] appraisal; Numismatic appraisal; Art appraisal; risk assessment for financial and insurance projects; Damage assessment (financial assessment); Monetary services; Pension services; Personal banking services; Personal financial banking services; Trusteeship; Warranty services; Financial brokerage services; Currency trading; Provision of information relating to rates of exchange; Providing multiple payment options by means of customer-operated electronic terminals available on-site in retail stores; Provision of current accounts; Provision of finance for sales; Provision of commercial finance; Debt collection; Rent collection; Depositing of valuables; Check [cheque] verification; Asset management; Capital management; Management of charge card services; Financial risk management services; Management of financial assets; Debit card validation services; Credit card protection and registry services; Money transfer services utilising electronic cards; Payment transaction card services; Savings bank services; Provident fund services; Money order payment guarantee services; Management of credit card services; Bank card, credit card, debit card and electronic payment card services; Telegraphic remittance [payment] services; Bank card services; Credit card and debit card services; Factoring; Financial information; Financial analysis; Financial banking services for the withdrawal of money; Financial banking services for the deposit of money; Financial information services relating to lost credit cards; Financial consulting; Evaluation (Financial -) [insurance, banking, real estate]; Financial intermediary services; Financing services; Financial services for the management of credit cards; Financial services related to the issuance of bank cards and debit cards; Financial services relating to bank cards; Financial services relating to credit cards; Financial services relating to the provision of vouchers for the purchase of goods; Financing services relating to trade; Financial services relating to savings; Financial investment; Financial planning and management; Financial sponsorship; Financial management of cash accounts; Financial management via the Internet; Private banking.

Class 38:        Telecommunications; Wireless broadcasting; Telecommunications routing and junction services; Providing telecommunications connections to a global computer network; Delivery of messages and data by electronic transmission; Electronic data interchange services; Electronic exchange of data stored in databases accessible via telecommunication networks; Electronic mail; Electronic bulletin board services [telecommunications services]; Electronic voice messaging services; Electronic transmission of data; Electronic transmission of data and documents via computer terminals; Web messaging; Electronic messaging; Message sending; Message sending via computer networks; Electronic transmission of messages (Services for the -); News agencies; Information about telecommunication; Communications by cellular phones; Computer communications for the transmission of information; Computer transmission of information accessed via a code or a terminal; Communications by fiber [fibre] optic networks; Communications by computer terminals; Communication by telegram; Telephone services; Communication services, namely, electronic transmission of data and documents among users of computers; Communication services between data banks; Communication services over computer networks; Local area networks (Leasing of -); Leasing of telecommunication lines for access to computer networks; Computerised data communications; Organizing access to internet databases; organizing access to computer databases; Providing access to databases; Provision of access to data or documents stored electronically in central files for remote consultation; Providing access to and leasing access time to computer databases; Provision of access to sites on an electronic information network; Providing on-line electronic bulletin boards for transmission of messages among computer users; Provision of on-line communications services; Providing telecommunications connections to a global computer network or databases; Providing frame relay connectivity services for data transfer; Rental of message sending apparatus; Rental of access time to global computer networks; Rental of modems; Rental of telecommunication equipment; Rental of telephones; Rental of facsimile apparatus; Data transmission and data broadcasting; Data transmission, verified by electronic signature; Data transmission connected to access passwords; Transmission of data by electronic means; Data transmission by electronic mail; Transmission of information by computer; Transmission of data through the use of electronic image processing by telephone link; Transmission of data by cable; Transmission of information online; Transmission of information between computers and workstations; Transmission of information via computers connected to the same telematic network; Transmission of information by electronic means; Computer aided transmission of messages and images; Telegram transmission; Facsimile transmission; Transmission of digital files; Satellite transmission; Transmission of digital information; Cable television broadcasting; Providing virtual facilities for real-time interaction among computer users; Providing access to a global computer network for the transfer and dissemination of information; Providing access to global computer networks and other computer networks; Provision of access to an electronic on-line network for information retrieval; Providing access to electronic communications networks; Provision of electronic data links; Provision of access to the internet for others; Providing access to a global computer information network; Provision of access to electronic messaging systems; Providing internet chatrooms; Providing user access to global computer networks; Provision of internet access services; Provision of telecommunications access to databases and the internet; Provision of telecommunications channels for the presentation of goods on television for the purpose of selling (teleshopping); Computer aided transmission of information and images; Radio broadcasting; Forums [chat rooms] for social networking; Paging services [radio, telephone or other means of electronic communication]; Streaming of audio material on the internet; Streaming of video material on the internet; Television broadcasting; Telegraph services; Telecommunications by e-mail; Telecommunications by computer terminals, via telematics, satellites, radios, telegraphs, telephones; Internet based telecommunication services; Telecommunications services, namely providing fiber optic network services; Telecommunications services, namely, ISDN services; Teleconferencing services; Telex services; Telephone services; Services for interconnection of bank databases; Electronic data interchange services; Services for internal electronic interchange of data; Interactive communications services by means of computer; Instant electronic messaging services; Electronic data exchange services; Data transmission services between networked computer systems; Providing on-line chat rooms for transmission of messages among computer users; Transmission of computerised documents; Computer data transmission services; Online messaging services; Telecommunication gateway services; Internet service provider services; Voice mail services; Relaying of messages [electronic].

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; Updating of home pages for computer networks; Maintenance of and updating of computer software; Updating and upgrading of computer software; Updating of computer software relating to computer security and prevention of computer risks; Updating of software data bases; Computer system analysis; Analytical services relating to computer programmes; Antispamming services; Recovery of computer data; Graphic design; Digitization of documents; Designing and developing webpages on the internet; Software design and development; Design of homepages and websites; Design of computer game software; Design, maintenance, development and updating of computer software; Monitoring of computer systems by remote access; Preparation of data processing programmes; Constructing an internet platform for electronic commerce; Engineering services; Installation and actualisation of programs for data processing; Installation and maintenance of computer programs; Installation and maintenance of Internet access software; Installation and maintenance of software for Internet access; Installation of software; Installation of firmware; Installation, maintenance and updating of computer software; Installation, setting up and maintenance of computer software; Installation, maintenance, repair and servicing of computer software; Internet walled garden services; Quality control; Encoding of magnetic cards; Coding of messages; Encryption, decryption and authentication of information, messages and data; Advisory services relating to computer programming; Consultation services relating to computer software; Computer programming; Computer programming for the internet; Computer programming for telecommunications; Conversion of data or documents from physical to electronic media; Data conversion of electronic information; Data conversion of computer programs and data [not physical conversion]; Consultancy relating to the creation and design of computer hardware; Consultancy services relating to computer programming; Configuration of computer software; Configuration of computer firmware; Configuration of computer systems and networks; Copying of computer software; Monitoring of network systems; Rental of computer software, data processing equipment and computer peripheral devices; Rental of software; Provision of on-line support services for computer program users; Providing temporary use of nondownloadable computer software for use in the creation and publication of on-line journals and blogs; Assurance of resources for searching the Internet; Updating of computer software; Application service provider [ASP], namely, hosting computer software applications of others; Computer rental; Leasing of computer software for reading a data stream; Rental of data carriers; Rental of a database server (to third parties); Rental of webservers; Rental services relating to data processing equipment and computers; Diagnosis of faults in computer software; Software customisation services; Maintenance and repair of software; Maintenance of data bases; Maintenance of software; Maintenance of computer software relating to computer security and prevention of computer risks; Maintenance of software for Internet access; Providing computer software that may be downloaded from a global computer network; Provision of information relating to computer programs; Hosting the web sites of others on a computer server for a global computer network; Hosting computer sites [web sites]; Duplicating computer programs; Computer code conversion for others; Programming of data processing equipment; Computer software programming services; Software related design research; Computer software design; Computer software design and updating; Design and development of software and hardware for signal amplification and transmission; Design of information systems; Design of information systems relating to finance; Design of computer databases; Computer system design; Design of software for digital signal processing; Development and creation of computer programmes for data processing; Developmnet and creation of computer software for certification of electronic documents and the time of their signing; Development and creation of computer software for generating access passwords; Development of software for secure network operations; Development of technologies for the protection of electronic networks; Development of computer languages; Software engineering; Computer software research; Creating and maintaining web sites for others; Data warehousing; Technical research; Services for reproducing computer programs; Data recovery services; Data security services; Computer virus protection services; Data encryption and decoding services; Computer system monitoring services; Computer security system monitoring services; Provision of security services for computer networks, computer access and computerised transactions; Data security services [firewalls]; Services for the design of electronic data processing software; Computer software technical support services; Services for the digitalization of maps; Services for the digitalization of charts; Application service provider services; Digital compression of computer data; Encryption of digital images.

The contested goods and services are the following:

Class 9:        Downloadable software and application software and computer software platforms for use in relation to website design, development, hosting, updating, maintenance, design, customisation, display and content management and in relation to database management and creating searchable databases of information and data and in relation to business services, namely, detection, tracking, monitoring, alerting, removal and blocking of online advertisements and advertisement blockers for others; downloadable electronic publications and reports; electronic databases and databanks.

Class 35:        Business and marketing advice and assistance in relation to websites; database management services; computerised database management services; compilation and systemisation of information into computer and online databases; market research by means of a computer database; business services, namely, tracking, monitoring, alerting, removal and blocking of online advertisements for others; information, advice and consultancy in relation to all the aforesaid services.

Class 36:        Payment processing and administrative services; automated payment services; electronic funds transfer services; provision of secure credit card and other payments on the Internet and other telecommunications media; clearing and reconciling financial transactions via electronic communication networks; credit card processing; processing and transmission of bills and payments; electronic payment services; pre-payment card services; electronic purse card services; information, advice and consultancy in relation to all the aforesaid services.

Class 38:        Providing access to and leasing access time to computer databases and databanks; electronic exchange of data stored in databases accessible via telecommunication networks; computer aided transmission of messages and images; providing user access to a global computer network; providing internet portals, on-line chat rooms, online forums and electronic bulletin boards for transmission of messages among users; provision of access to data or documents stored electronically in on-line files for remote consultation; services for internet users to upload, post, display, tag, and electronically transmit data, on-line publications and documentation and information; broadcasting of audiovisual and multimedia content via the Internet; telecommunication services for the electronic transmission, transfer and processing of financial data and payments; secure data transmission services (including by electronic mail and mobile systems); providing online communications links which transfer web site users to other local and global web pages; information, advice and consultancy relating to all the aforesaid services.

Class 42:        Computer software design, development, customisation, deployment and consultancy; installation, maintenance and repair of computer software; website design, development, hosting, updating, maintenance, customisation and display; computer and information technology support and consultancy services; providing temporary use of on-line non-downloadable software, application software and computer software platforms for use in relation to website design, development, hosting, updating, maintenance, design, customisation, display and content management; providing temporary use of on-line non-downloadable software, application software and computer software platforms for use in relation to database management and creating searchable databases of information and data; providing temporary use of on-line non-downloadable software, application software and computer software platforms for use in relation to business services, namely, detection, tracking, monitoring, alerting, removal and blocking of online advertisements and advertisement blockers for others; design and development of information technology systems, applications and processes; integration of computer systems and networks; computer, website and data security services; integration and linking of computer systems, platforms, software applications, databases and networks; encryption, decryption and authentication of information, messages and data; computerised analysis of data; information, advice and consultancy in relation to all the aforesaid services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in both lists of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is also 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 Downloadable software and application software and computer software platforms for use in relation to website design, development, hosting, updating, maintenance, design, customisation, display and content management and in relation to database management and creating searchable databases of information and data and in relation to business services, namely, detection, tracking, monitoring, alerting, removal and blocking of online advertisements and advertisement blockers for others are included in the broad category of, or overlap with, the opponent’s computer software. Therefore, they are identical.

The contested downloadable electronic publications and reports are identically contained in both lists of goods (including synonyms).  

The contested electronic databases and databanks consist of different types of data, usually stored in or managed with computers. They need software in order to be viewed, stored, updated, read, etc. These contested goods are similar to the opponent’s software, since they can be complementary, can target the same consumers, have the same distribution channels and are likely to come from the same kinds of companies.

Contested services in Class 35

The contested business and marketing advice and assistance in relation to websites have a different provider and nature than the opponent’s creation of homepages in Class 42 (advice in relation to websites vs the actual creation of a website). Furthermore, they are not complementary or in competition with each other. The same reasoning applies in relation to the opponent’s remaining goods and services in the form of instruments, apparatuses, software, financial services and telecommunication services. Therefore, they are dissimilar.

The contested database management services; computerised database management services; compilation and systemisation of information into computer and online databases; market research by means of a computer database are all clerical services which have differ in provider and purpose from the opponent’s installation, maintenance and repair of computer software in Class 42. Furthermore, they are not complementary or in competition with each other. The same reasoning applies in relation to the opponent’s remaining goods and services in the form of instruments, apparatuses, software, financial services and telecommunication services. Therefore, they are dissimilar.

The contested business services, namely, tracking, monitoring, alerting, removal and blocking of online advertisements for others are services rendered by a provider principally with the object of help in the working or management of a commercial undertaking. Therefore, the services differ in provider and purpose from the opponent’s installation, maintenance and repair of computer software and creation of homepages in Class 42. Furthermore, they are not complementary or in competition with each other. The same reasoning applies in relation to the opponent’s remaining goods and services in form of instruments, apparatuses, software, financial services and telecommunication services. Therefore, they are dissimilar.

The contested information, advice and consultancy in relation to all the aforesaid services [business and marketing advice and assistance in relation to websites; database management services; computerised database management services; compilation and systemisation of information into computer and online databases; market research by means of a computer database; business services, namely, tracking, monitoring, alerting, removal and blocking of online advertisements for others] are also dissimilar to all of the opponent’s goods and services for the same reasoning as described above.

Contested services in Class 36

The contested payment processing and administrative services; automated payment services; electronic funds transfer services; provision of secure credit card and other payments on the Internet and other telecommunications media; clearing and reconciling financial transactions via electronic communication networks; credit card processing; processing and transmission of bills and payments; electronic payment services; pre-payment card services; electronic purse card services; information, advice and consultancy in relation to all the aforesaid services are included in, or overlap with, the broad category of the opponent’s financial affairs. Therefore, they are identical.

Contested services in Class 38

Telecommunications, also known as ‘telecom’, is a field that covers the exchange of information over (significant) distances by electronic means and refers to all types of content: voice, data, video transmission, etc. ‘Telecommunications’ is a broad term that includes a wide range of information-transmitting technologies such as telephones (wired and wireless); telegraphs; microwave communications; radio and television broadcasting; optical fibre, laser and light beams; satellites; and, of course, the internet. The simplest form of telecommunication takes place between two stations (point to point), but it is common for multiple transmitting and receiving stations to exchange data among them. Such an arrangement is called a telecommunications network. The Internet is the largest example of a telecommunications network. On a smaller scale, examples include local area networks (LANs); corporate and academic wide-area networks (WANs); telephone networks; cellular/mobile networks; police and fire communications systems; taxi dispatch networks; and groups of amateur (ham) radio operators and broadcasting networks. Telecommunications systems are generally run by telecommunications service providers. Under this large umbrella of companies that provide different types of telecommunications services are internet service providers, wireless service providers, radio and television broadcasters, cable companies, satellite television providers and managed service providers.

Therefore, the contested providing access to and leasing access time to computer databases and databanks; electronic exchange of data stored in databases accessible via telecommunication networks; computer aided transmission of messages and images; providing user access to a global computer network; providing internet portals, on-line chat rooms, online forums and electronic bulletin boards for transmission of messages among users; provision of access to data or documents stored electronically in on-line files for remote consultation; services for internet users to upload, post, display, tag, and electronically transmit data, on-line publications and documentation and information; broadcasting of audiovisual and multimedia content via the Internet; telecommunication services for the electronic transmission, transfer and processing of financial data and payments; secure data transmission services (including by electronic mail and mobile systems); providing online communications links which transfer web site users to other local and global web pages are included in the broader category of the opponent’s telecommunications. Therefore, they are identical.

Advisory services are services for the provision of advice that is tailored to the circumstances or needs of a particular user and recommendations for specific courses of action by the user. Provision of information, on the other hand, refers to the provision of material (general or specific) to a user about a matter or service. In the present case, the services to which advisory, consultancy and provision of information relate have been found to be identical to the opponent’s telecommunication services. They consist mainly in the provision of knowledge regarding the field of telecommunications, and it is common in the market for companies providing these services (telecommunication services) to also provide complementary information and consultancy related thereto. Moreover, these services can also target the same end users. Therefore, the contested information, advice and consultancy relating to all the aforesaid services [the applicant’s telecommunication related services] are similar to the opponent’s telecommunications.

Contested services in Class 42

Computer software design, development, customisation, deployment and consultancy are identically contained in both lists of goods and services (including synonyms). 

Installation, maintenance and repair of computer software are identically contained in both lists of goods and services (including synonyms). 

Website design, development, hosting, updating, maintenance, customisation and display are identically contained in both lists of goods and services (including synonyms). 

Computer and information technology support and consultancy services are identically contained in both lists of goods and services (including synonyms).

The contested providing temporary use of on-line non-downloadable software, application software and computer software platforms for use in relation to website design, development, hosting, updating, maintenance, design, customisation, display and content management overlap with the opponent’s providing temporary use of non-downloadable computer software for use in the creation and publication of on-line journals and blogs. Therefore, they are identical.

The contested providing temporary use of on-line non-downloadable software, application software and computer software platforms for use in relation to database management and creating searchable databases of information and data overlap with the opponent’s providing temporary use of non-downloadable computer software for use in the creation and publication of on-line journals and blogs. Therefore, they are identical.

The contested providing temporary use of on-line non-downloadable software, application software and computer software platforms for use in relation to business services, namely, detection, tracking, monitoring, alerting, removal and blocking of online advertisements and advertisement blockers for others overlap with the opponent’s providing temporary use of non-downloadable computer software for use in the creation and publication of on-line journals and blogs. Therefore, they are identical.

The contested integration of computer systems and networks and integration and linking of computer systems, platforms, software applications, databases and networks overlap with the opponent’s monitoring of computer systems by remote access. Therefore, they are identical.

The contested information, advice and consultancy in relation to all the aforesaid services [the applicant’s software related services] overlap with the opponent’s advisory services relating to computer programming and consultation services relating to computer software. Therefore, they are identical.

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 services found to be identical or similar are directed at the public at large and also at business customers with specific professional knowledge or expertise (telecommunications engineers, researchers, IT experts, etc.). The degree of attention may vary from average to high, depending on the nature and type of services concerned, and, particularly, due to the highly technical nature, specificity and price of some of them, as well as the infrequency with which they will be purchased.

3. The signs

DPASS	adpass
Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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 earlier mark is the word mark ‘DPASS’, while the contested sign is the word mark ‘adpass’. In case of word marks it is the word as such that is protected and not the way in which it is represented. Therefore, the fact that the earlier mark is represented in capital letters and the contested sign in lower case letters does not have an impact on the comparison.

None of the signs bears a meaning to the relevant public and both are, therefore, distinctive for the goods and services that have been found to be similar or identical.

Visually and aurally, the signs coincide in the common letter string ‘-DPASS’, which encompasses the totality of the earlier mark and the last five letters (out of six) of the contested sign ‘adpass’. The signs differ solely, visually and aurally, in the additional letter ‘a-’ found at the beginning of the contested sign, which does not affect the pronunciation of the remaining coinciding letters for the relevant public. Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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.

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).

As has been concluded above, some of the contested goods and services are identical or similar and the signs are visually and aurally similar to at least an average degree, while conceptually neither of them has a meaning for the Bulgarian public.

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 to the goods and services in question, as was indicated in section b) of this decision, need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In the present case, the signs under comparison share the letter string ‘-DPASS’, which encompasses the totality of the earlier mark and the last five letters (out of six) of the contested sign. The signs differ due to the additional letter ‘a-’ found at the beginning of the contested sign, which does not affect the pronunciation of the remaining letters for the relevant public. Therefore, this difference in a single letter is not enough to set them apart, especially in relation to the goods and services in question found to be identical or similar.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian public and therefore the opposition is partly well-founded on the basis of the opponent’s Bulgarian trade mark registration No 91 439.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

Bulgarian trade mark registration No 91 440 for the figurative mark.

The other earlier right invoked by the opponent is less similar to the contested sign. This is because it contains figurative elements, namely stylized lettering which is not present in the contested sign. Moreover, it covers the same scope of goods and services. Therefore, the outcome cannot be different with respect to the services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Dorothée SCHLIEPHAKE

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.