OPPOSITION No B 2 522 236

Dennis Münninghoff, Groenewoud 33, 5151 RM Drunen, Netherlands (opponent), represented by Merkenbureau Bouma B.V., Beurs WTC – Beursplein 37, room 313, 3011 AA Rotterdam, Netherlands (professional representative)

a g a i n s t

Sharptec Mateusz Ropka, prof. Michała Życzkowskiego 14, 31 864 Kraków, Poland (applicant), represented by Katarzyna Komala-Wójcik, ul. Twardowskiego 111a, 30-346 Kraków, Poland (professional representative)

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 522 236 is upheld for all the contested goods and services, namely:

Class 9:         Programs for computers; Computer operating system software; Software; Computer software, recorded; Computer programs for network management; Computer programs [downloadable software]; Computer software programs for database management; Computer programmes relating to local area networks; Computer programmes stored in digital form; Computer software packages; Computers and computer hardware.

Class 42:         Design and writing of computer software; Computer software design and updating; Software design for others; Design, maintenance and up-dating of computer software; Design and development of computer hardware and software; Research, development, design and upgrading of computer software; Designing computer software for controlling self-service terminals; Design, maintenance, rental and updating of computer software; Computer systems integration services; Configuration of computer software; Rental of computer software; Installation of computer software; Computer rental; Consultancy in the field of computers; Rental of computers and computer software; Providing information, advice and consultancy services in the field of computer software; Design of computer machine and computer software for commercial analysis and reporting.

2.        European Union trade mark application No 13 656 459 is rejected for all the contested goods and services. It may proceed for the remaining services in Class 45 against which the opposition has not been directed.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 656 459, namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 5 280 301. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, European Union trade mark No 5 280 301.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 13/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 13/02/2010 to 12/02/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

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; legal services.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 28/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/09/2016 to submit evidence of use of the earlier trade mark. On 02/09/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Third party statement: an email dated 15/10/2015 from the CFO of a Dutch company in Dutch together with an English translation thereof indicating inter alia that that company has been using the opponent’s GymManager member administration product/service since 2010 and that the opponent has been involved in managing the growth of that company and all necessary and desired developments in the member administration system.  

• Advertisements: advertisements showing the earlier mark in the magazine The Fitness Industry Association Supplier’s Directory from 2009/2010 and 2010/2011 with the same ad providing information about the opponent’s GymManager membership administration software, one advertisement, with a similar ad, showing the earlier mark in the magazine ukactive handbook from 2015/2016 and four extracts dated 18/06/12, 27/05/13, 26/06/13 and 26/08/14 consisting of the two different ads used in the magazines referred to above with references to the UK market and a Dutch sales office but with no indications where they were published.

• Correspondence by the opponent to third parties: five emails from the opponent to different third parties about the opponent’s GymManager software and dated in 2011, 2013 and 2014.

• Invoices: eight invoices (with the prices indicated in EUR or GBP masked) from the years 2011 (one), 2012 (one), 2013 (five) and 2014 (one) to companies in different territories, namely the Netherlands (four), Spain (one) and the United Kingdom (including Gibraltar) (three). All eight invoices refer to ‘GymManager’ subscriptions/software and three of them include support.

• Website extract: an extract from the website www.supportprofessionals.uk featuring the earlier mark and with information about the software offered under this mark.

• Screenshots: undated screenshots of the GymManager software login menu for member management in different languages, namely German, Dutch, French, English, Italian, Portuguese, Romanian and Polish.

• Domain name registration details: extracts from www.sidn.nl and www.whois.eurid.eu showing that the websites www.gymmanager.nl and www.gymmanager.eu were registered on 24/10/2003 and 18/07/2006 respectively.

The invoices show that the places of use are at least the Netherlands, Spain and the United Kingdom. This can be inferred from the currencies mentioned (‘EUR/GBP’) and the addresses in these countries. Therefore, the evidence relates to the relevant territory.

Most of the evidence is also dated within the relevant period and covers various different years (between 2010 and 2015) or otherwise refers to this time period.

The advertisements, website extracts and screenshots provided show the nature of use made by the opponent of the earlier mark as a trade mark. This evidence shows that it has been used as registered, albeit with the figurative device in the colour red (instead of black). However, this difference is not such as to alter the distinctive character of the mark in the form in which it was registered and therefore constitutes use of the earlier mark in accordance with the provisions laid down by Article 15(1)(a) EUTMR.

As regards the extent of use, only eight invoices were provided and with the sales prices masked. However, use of the mark need not be quantitatively significant for it to be deemed genuine and the assessment of genuine use entails a degree of interdependence between the factors to be taken into account. Thus, the fact that the evidence provided does not confirm that the extent of use or commercial volume achieved under the mark has been particularly high, may be offset by the fact that the evidence shows use of the mark in various different member states, namely the Netherlands, Spain and the United Kingdom and over a long period of time, namely between 2010 and 2015.

Therefore, taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following services covered by the broad categories of design and development of computer software and technological services listed in the earlier mark:

Class 42: Software as a service [SaaS]; support services for computer software.

However, in the present case the opponent did not show sufficient use of the earlier mark for any other items within the above categories which altogether could justify use for the whole categories of design and development of computer software or technological services. Therefore, the Opposition Division will only consider the abovementioned specific services in its further examination of the opposition.

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.

1. The goods and services

The services on which the opposition is based are the following:

Class 42: Software as a service [SaaS]; support services for computer software.

The contested goods and services are the following:

Class 9: Programs for computers; Computer operating system software; Software; Computer software, recorded; Computer programs for network management; Computer programs [downloadable software]; Computer software programs for database management; Computer programmes relating to local area networks; Computer programmes stored in digital form; Computer software packages; Computers and computer hardware.

Class 42: Design and writing of computer software; Computer software design and updating; Software design for others; Design, maintenance and up-dating of computer software; Design and development of computer hardware and software; Research, development, design and upgrading of computer software; Designing computer software for controlling self-service terminals; Design, maintenance, rental and updating of computer software; Computer systems integration services; Configuration of computer software; Rental of computer software; Installation of computer software; Computer rental; Consultancy in the field of computers; Rental of computers and computer software; Providing information, advice and consultancy services in the field of computer software; Design of computer machine and computer software for commercial analysis and reporting.

As a preliminary remark, for the sake of clarity, the opponent argues that the legal services listed in the earlier mark in Class 42 are “identical and similar” to the applicant’s services in Class 45. In this respect, apart from the fact that no proof of use was submitted with respect to legal services and that these services therefore are no longer included in the services on which the opposition is based, the Opposition Division notes that the notice of opposition was not directed against the services covered by the contested application in Class 45. Therefore, the applicant’s services in Class 45 are not included in the scope of the opposition filed and, since the scope of the opposition cannot be extended to be directed against additional services after the three month opposition period has expired, they do not form part of the contested services. As a result, the services covered by the contested application in Class 45 will not be compared with the opponent’s services for which use was considered to have been established.

As regards the goods and services to be compared, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 programs for computers; computer operating system software; software; computer software, recorded; computer programs for network management; computer programs [downloadable software]; computer software programs for database management; computer programmes relating to local area networks; computer programmes stored in digital form; computer software packages consist of software which is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. The opponent’s software as a service [SaaS] in Class 42 is a way of delivering software over the Internet, as a service. Instead of installing and maintaining software, the customers simply access it via the Internet, freeing themselves from complex software and hardware management. Therefore, software as a service is essentially web-based or hosted software run on the SaaS provider’s servers to which the customers are given access by paying a subscription fee. Although the nature of software and software as a service [SaaS] is not the same, they can share the same purpose and be in competition; they can share the same relevant public and can often coincide in the same usual producers and providers of such goods and services. Therefore, the contested goods listed above are at least similar to the opponent’s software as a service [SaaS] in Class 42.

The contested computers and computer hardware are similar to the opponent’s software as a service [SaaS]. These goods are designed to work hand in hand with software and computer hardware companies also manufacture software or provide software as a service; they can share the same distribution channels and target the same relevant public.

Contested services in Class 42

All the contested services, namely providing information, advice and consultancy services in the field of computer software; design and writing of computer software; computer software design and updating; software design for others; design, maintenance and up-dating of computer software; design and development of computer hardware and software; research, development, design and upgrading of computer software; designing computer software for controlling self-service terminals; design, maintenance, rental and updating of computer software; configuration of computer software; rental of computer software; installation of computer software; design of computer machine and computer software for commercial analysis and reporting; rental of computers and computer software; computer systems integration services; computer rental; consultancy in the field of computers are either identical to the opponent’s support services for computer software because they overlap with each other or are otherwise similar to these services because they are complementary, share the same relevant public and are often provided by the same companies.

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 are directed at the public at large as well as business consumers. The degree of attention will vary from average to higher than average for services such as design and writing of computer software which, due to their degree of sophistication and cost, are likely to be the subject of a more careful purchasing decision.

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 earlier mark is a figurative mark consisting of the verbal element ‘Gym manager’ over two lines in black bold typeface. The tail of the letter ‘y’ is connected to the preceding letter ‘G’ and the word ‘Gym’ is significantly bigger than the word ‘manager’ featured below, the letters ‘man’ being the same width as the letter ‘m’ in the word ‘Gym’. Next to the word ‘Gym’ and above the letters ‘ager’ is a black figurative device made up of two overlapping parallelograms.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, although distinctive, the consumers will pay less attention to the figurative device of the earlier mark and perceive it as a secondary component.

The word ‘manager’ is an English word meaning, inter alia, ‘a person who is responsible for running part of or the whole of a business organization’. However, in the field of software and computer technology it also means ‘a computer program that organizes a resource, such as a set of files or a database’ (information extracted from Collins English Dictionary on 14/03/2017 at www.collinsdictionary.com/dictionary/english/manager). The word ‘manager’ is an English word that is commonly used in the business sector and also in the field of software. Therefore, the Opposition Division considers that the meaning of this element in the earlier mark will be understood by the relevant public in the whole of the European Union. In view of the descriptive meaning of the word ‘manager’ in relation to the relevant services, it will be perceived as non-distinctive for the relevant public.

The word ‘gym’ is an English word meaning, inter alia, ‘a club, building, or large room, usually containing special equipment, where people go to do physical exercise and get fit’ (information extracted from Collins English Dictionary on 14/03/2017 at www.collinsdictionary.com/dictionary/english/gym). In view of this and the meaning of the word ‘manager’ as outlined above, the applicant argues that the expression ‘gym manager’ has a somewhat descriptive character and that it will be perceived as meaning services connected with fitness club management. However, the Opposition Division does not consider that the English word ‘gym’ will be understood by the relevant public throughout the Union, in particular where the equivalent word in the official language in the relevant territory is not very close to the English word, such as in Latvia, where English is not widely spoken and the equivalent word is ‘sporta zāle’. Therefore, for the relevant public in, for example, Latvia, the verbal element ‘Gym’ of the earlier mark will not be understood as having any particular meaning and for this part of the public, it will be perceived as fanciful and, thus, distinctive.

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the relevant part of the public in Latvia.

For this part of the public, the earlier mark will be perceived as being composed of the distinctive verbal element ‘Gym’, a secondary figurative element and the non-distinctive verbal element ‘manager’. Therefore, the verbal element ‘Gym’ will be perceived as the most distinctive element of the earlier mark.

Although the verbal element ‘Gym’ is more distinctive and bigger than the other elements, the earlier mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark consisting of the verbal element ‘GymManager’. Although ‘GymManager’ is depicted as one word, ‘Gym’ is in blue whereas ‘Manager’ is in grey and each word is also capitalised. Therefore, the verbal element will be perceived as consisting of two words. The verbal element is preceded by an abstract figurative element consisting of three different, slightly curved stripes in different shades of blue. The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The above considerations regarding the perception and the distinctiveness of the different verbal and figurative elements of the earlier mark apply equally to these elements of the contested sign.

Visually, the signs coincide in the verbal element ‘gym manager’ albeit depicted in different ways as outlined above. The signs also differ in the additional figurative elements contained in each sign and the colour combination used in the contested sign. Nevertheless, for the reasons outlined above, the figurative elements of the signs will be perceived as secondary elements and consumers will give more weight to the verbal element in both signs.

In view of this and bearing in mind that both signs contain the same verbal element, they are considered visually similar to an average degree.

Aurally, both signs will be pronounced as ‘gym manager’. Therefore, they are aurally identical.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding word ‘manager’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of any of the goods or services at issue. The attention of the relevant public will be attracted by the additional distinctive verbal elements, which, although consisting of the same word ‘gym’, will have no meaning for the relevant part of the public. Thus, 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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

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).

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.

In the present case, the contested goods and services are identical or similar to the opponent’s services for which use has been proven. The degree of attention of the relevant public will vary from average to high.

The signs in dispute have been found to be visually similar to an average degree and phonetically identical and there are no conceptual differences between the signs that could help consumers to differentiate them.  

The signs coincide in the identical verbal element ‘gym manager’. The word ‘gym’, which is the first word in each sign, is their most distinctive element and although the second word ‘manager’ will be perceived as non-distinctive, the differences between the signs are confined to a different stylisation and configuration of the verbal elements and the different figurative elements which are, however, secondary elements in the overall impression produced by the signs for the reasons outlined above. Taking this into account and the identity and similarity between the relevant goods and services, the Opposition Division considers that there is a likelihood of confusion on the part of the relevant public in Latvia, even for consumers (including professionals) who may have a higher degree of attention in relation to some of the relevant services.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested sign as 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). The relevant public is therefore likely to believe that the goods and services intended to be sold or provided under the contested sign originated from the same undertaking that provides the relevant services under the earlier mark, or from economically linked undertakings.

In its observations, the applicant argues that many companies on the market use descriptive trade marks for similar products such as gym management and gym master and provided one screenshot without any source indication but featuring a reference to www.gymneshiya.com showing use of a software called ‘Gym Management Software’ and one screenshot from www.gymmastersoftware.com showing use of a software called ‘GYM MASTER’.

In this respect, the mention of two different products does not demonstrate that many companies on the market use descriptive (identical or similar) trade marks for similar products as contended by the applicant. In addition, the reference to two .com websites with information featured in English without any further evidence in support does not show that the use mentioned actually refers to use within the European Union market, let alone in the relevant territory for which a likelihood of confusion has been assessed. Moreover, the use referred to do not concern software called ‘Gym Manager’ which is the identical verbal element of which the signs in dispute consist.

Therefore, no convincing arguments and evidence have been provided in this respect and this argument of the applicant must therefore be rejected as unfounded.

The applicant also argues that the earlier trade mark has a low distinctive character given that there are many European Union trade marks applied for or registered in Classes 9 and 42 that include the word ‘GYM’ or ‘MANAGER’ and indicates that as at 06/11/2016, there were 412 EUTMs including the word ‘MANAGER’ in Class 42. 

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the reference to such trade marks does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘GYM’ or ‘MANAGER’ and even less trade marks that consist of the verbal element ‘GYM MANAGER’. In any event, the Opposition Division has already concluded that the word ‘MANAGER’ will be perceived as non-distinctive in relation to the relevant goods and services. Under these circumstances, the applicant’s claims cannot alter the findings reached above.

Considering all the above, there is a likelihood of confusion on the part of the public in Latvia in relation to all the contested goods and services.

As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 280 301. It follows that the contested trade mark must be rejected for all the contested goods and 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.

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

Anunciata SEVA MICO

Sam GYLLING

Denitza STOYANOVA-VALCHANOVA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.