OPPOSITION No B 2 742 610

Vermillion, Inc., 12117 Bee Caves Road, Austin, Texas 78738, United States of America (opponent), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston Birmingham  B16 8QQ, United Kingdom (professional representative)

a g a i n s t

STM Savunma Teknolojileri Mühendislik Ve Ticaret Anonim Sirketi, Mustafa Kemal Mahallesi, 2151. Cadde No: 3/A, Çankaya- Ankara, Turkey (applicant), represented by Silex IP, Calle Velázquez 109, 2º D, 28006 Madrid, Spain (professional representative).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 742 610 is partially upheld, namely for the following contested goods and services:

Class 9:         Computer software; calculating machines, data processing equipment, computers; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media

Class 35:         Bringing together, for the benefit of others, of computer software. 

Class 42:         Design and development of computer hardware and software; computer programming services; computer software rental services; computer software design services for others; duplication of computer programs; installation of computer software computer software updating services for others; computer database development services; computer advisory services, namely, creating and maintaining web sites for others; consultancy services in the field of computer hardware; computer data recovery services; computer systems analysis services; computer consultancy services; computer rental services; scientific and technological services and research and design relating thereto; scientific and industrial research, namely scientific research and development.

2.        European Union trade mark registration No 15 182 281 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 182 281. The opposition is based on international trade mark registration No 1 268 866 designating, inter alia, the European Union. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

1. The goods and services

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

Class 9: Downloadable software for medical diagnostics; downloadable software for gynecological diagnostics; downloadable software for cancer diagnostics; medical software for diagnostics; medical software for gynaecological diagnostics; medical software for cancer diagnostics.

Class 42: Providing on-line non-downloadable software for medical diagnostics; providing on-line non-downloadable software for gynaecological diagnostics; providing on-line non-downloadable software for cancer diagnostics.

Class 44: Medical testing for diagnostic or treatment purposes in the field of oncology; medical testing for diagnostic or treatment purposes in the field of gynaecology; medical diagnosis of cancer.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; 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; Protective helmets; Lifesaving apparatus, flotation vests, life jackets, life nets, life preservers, life-buoys, breathing apparatus for divers, namely, rebreathers, compressed air bailout units, safety glasses for divers use, safety nets for divers use; protective clothing, protective gloves for industrial use, protective eyeglasses, protective helmets; signal whistles, signalling buoys; radar, sonar, night vision goggles; Metal detectors for industrial or military purposes; Infrared detectors for use in military.

Class 35: Advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of 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 enabling customers to view and purchase those goods; the bringing together, for the benefit of others, of 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, Protective helmets, Lifesaving apparatus enabling customers to view and purchase those goods; the bringing together, for the benefit of others, of flotation vests, life jackets, life nets, life preservers, life-buoys, breathing apparatus for divers, namely, rebreathers, compressed air bailout units, safety glasses for divers use, safety nets for divers use enabling customers to view and purchase those goods; the bringing together, for the benefit of others, of protective clothing, protective gloves for industrial use, protective eyeglasses, protective helmets, signal whistles, signalling buoys, radar, sonar, night vision goggles, Metal detectors for industrial or military purposes, Infrared detectors for use in military (excluding the transport thereof), enabling customers to view and purchase those goods.

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; scientific and industrial research, namely scientific research and development, chemical research services, geological research; material testing and consumer product safety testing services; engineering consultancy services; mapping services; land surveying; computer advisory services, namely, creating and maintaining web sites for others; computer programming services; computer software design services for others; computer software updating services for others; consultancy services in the field of computer hardware; computer database development services; computer data recovery services; computer systems analysis services; computer consultancy services; computer rental services; computer software rental services; duplication of computer programs; installation of computer software.

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.

However, the term ‘namely’, used in the applicant’s list 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 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 includes, as a broader category the opponent’s medical software for diagnostics. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested calculating machines, data processing equipment, computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs to operate. The opponent’s medical software for diagnostics in Class 9 are composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. The same companies can produce these goods. They share the same distribution channels and target the same public. Moreover, they are complementary. For all these reasons, these goods are considered to be similar.

The contested apparatus for recording, transmission or reproduction of sound or images can be related to the opponent’s medical software for diagnostics in Class 9. These goods can be complementary and have the same distribution channels. They can be aimed at the same public and produced by the same or related undertakings, since they include computers. For these reasons, they are deemed to be similar.

The contested magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media can be related to the opponent’s medical software for diagnostics in Class 9. These goods have a different nature and a different purpose. However, they can be aimed at the same public and produced by the same or related undertakings, since they include computers. For these reasons, they are deemed to be similar to a low degree.

All of the remaining contested goods are dissimilar as they relate to various kinds of apparatus and instruments with very specific uses in different fields of science, cinematography, photography, navigation, lifesaving or teaching; devices such as accumulators, batteries, cables, circuits, conductors, switches, transistors, wires and so forth or indeed life-saving, protective or signalling, detecting devices which bear no resemblance to the goods and services from the earlier right which consist of software (goods and online services) as well as medical services in Class 44. None of these goods and services coincide in any relevant points of contact with those of the earlier rights, their nature and purpose differs as do their producers, consumers and distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another.

Contested services in Class 35

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar or dissimilar, as determined above.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested bringing together, for the benefit of others, of computer software is similar to a low degree to the opponent’s medical software for diagnostics.

The bringing together, for the benefit of others, of different goods enabling customers to view and purchase those goods is synonymous for retail services. In this sense, the contested retail services of the bringing together, for the benefit of others, of 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 enabling customers to view and purchase those goods; the bringing together, for the benefit of others, of 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, fire-extinguishing apparatus, Protective helmets, Lifesaving apparatus enabling customers to view and purchase those goods; the bringing together, for the benefit of others, of flotation vests, life jackets, life nets, life preservers, life-buoys, breathing apparatus for divers, namely, rebreathers, compressed air bailout units, safety glasses for divers use, safety nets for divers use enabling customers to view and purchase those goods; the bringing together, for the benefit of others, of protective clothing, protective gloves for industrial use, protective eyeglasses, protective helmets, signal whistles, signalling buoys, radar, sonar, night vision goggles, Metal detectors for industrial or military purposes, Infrared detectors for use in military (excluding the transport thereof), enabling customers to view and purchase those goods and the opponent’s goods in Class 9 (downloadable software for medical diagnostics; downloadable software for gynaecological diagnostics; downloadable software for cancer diagnostics; medical software for diagnostics; medical software for gynaecological diagnostics; medical software for cancer diagnostics) are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

The aforementioned contested retail services have nothing in common with any of the opponent’s services in Classes 42 or 44. They belong to different areas of activity, have a different purpose and are provided by different types of companies. Furthermore, these services are neither complementary to nor in competition with the opponent’s abovementioned services. Consequently, they are dissimilar, as are the remaining contested services for which the same assertions are applicable.

The contested advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may be the subject of  advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the earlier goods in Class 9 or services in Classes 42 or 44 being advertised.

The same applies to the comparison of advertising services with goods that can be used as a medium for disseminating advertising, such as software in Class 9. These goods and services are considered dissimilar.

The contested services business management; business administration; office functions in Class 35 also have nothing in common with the opponent’s goods in Class 9 or services in Classes 42 or 44.

These services are aimed at supporting or helping other businesses to do or improve their business.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. Consequently, they are dissimilar to the aforementioned earlier goods in Class 9 or services in Classes 42 or 44.

Business administration services are usually rendered by specialists, for example business consultants. These services include the performance or management of business operations and decision making, both regarding people and other resources, as well as directing activities toward common goals and objectives. Consequently, they are dissimilar to the aforementioned earlier goods in Class 9 or services in Classes 42 or 44.

Office functions refer to a range of activities undertaken within an office environment. Consequently, they are dissimilar to the aforementioned earlier goods in Class 9 or services in Classes 42 or 44.

Contested services in Class 42

The contested computer database development services overlap with the opponent’s providing on-line non-downloadable software for medical diagnostics, since the latter may include the development of databases included in such software. Therefore, they are identical.

The contested computer software rental services overlap with the opponent’s providing on-line non-downloadable software for medical diagnostics, since the latter may be provided via a software rental service. Therefore, they are identical.

The contested design and development of computer software; computer programming services; computer software design services for others; duplication of computer programs; installation of computer software; computer software updating services for others are services rendered in the field of software creation and maintenance. The opponent’s providing on-line non-downloadable software for medical diagnostics offers software which can created and maintained by the same programmers or software engineers. The same companies can provide these services. They share the same distribution channels and target the same public. Moreover, they are complementary. For all these reasons, these services are considered to be similar.

The contested design and development of computer hardware; computer advisory services, namely, creating and maintaining web sites for others; consultancy services in the field of computer hardware; computer data recovery services; computer systems analysis services; computer consultancy services; computer rental services are services in the field of IT which aim at providing software and hardware solutions. The opponent’s providing on-line non-downloadable software for medical diagnostics offers software which only runs on computer hardware. One cannot function without the other. They are complementary. Furthermore, they have a similar nature and purpose and can coincide in relevant public and commercial origin. Therefore, these services are considered to be similar.

The contested scientific and technological services and research and design relating thereto; scientific and industrial research, namely scientific research and development are services rendered by either individuals or groups in connection with theoretical or practical aspects in complex sectors of activity and include the undertaking of evaluations, estimates, research, analysis and reports in the fields of science and technology. They have a similar nature to the opponent’s providing on-line non-downloadable software for medical diagnostics. Furthermore, the services may coincide in end users and usual providers. Therefore, they are considered similar.

The contested industrial analysis and research services; scientific and industrial research, namely chemical research services, geological research; material testing and consumer product safety testing services; engineering consultancy services; mapping services; land surveying are dissimilar to the opponent’s goods and services. They do not have the same nature and purpose. Their relevant public is not the same. Furthermore, it is unlikely that the usual producers/providers and distribution channels of these goods and services will coincide. Finally, they are neither complementary nor in competition.

In relation to the goods and services found dissimilar, the opponent has claimed similarity, as they could work in conjunction with its software. However this is not a valid argument for similarity. It is only where there is a complementary relationship, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). However, this is not the case and the opponent has not provided any other tangible arguments nor adduced any evidence as such, this claim is set aside.

2. The signs

	OVERA
Earlier trade mark	Contested sign

The EUTM application should be considered identical to the earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (judgment of 20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54).

In the present case, the earlier trade mark is a figurative mark consisting of only the word ‘OVERA’ in a standard typeface, namely Times New Roman. The contested sign is a word mark which consists of the word ‘OVERA’ in standard typeface. The differences between the signs are so insignificant that they would go unnoticed by the relevant public.

Therefore, the signs in conflict are identical.

3. 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 higher degree of similarity between signs may be offset by a lower degree of similarity between goods and services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The signs were found to be identical and a part of the contested goods and services, namely computer software in Class 9 and computer software rental services; computer database development services in Class 42 are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods and services.

Furthermore, the contested goods and services calculating machines, data processing equipment, computers; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media in Class 9, the bringing together, for the benefit of others, of computer software in Class 35 and design and development of computer software; computer programming services; computer software design services for others; duplication of computer programs; installation of computer software computer software updating services for others; design and development of computer hardware; computer advisory services, namely, creating and maintaining web sites for others; consultancy services in the field of computer hardware; computer data recovery services; computer systems analysis services; computer consultancy services; computer rental services; scientific and technological services and research and design relating thereto; scientific and industrial research, namely scientific research and development in Class 42 were found to be similar or similar to a low degree to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical, similar or similar to a low degree to those of the earlier trade mark.

The rest of the contested goods and 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 goods cannot be successful.

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

Martin EBERL Frank MANTEY Vanessa PAGE

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.