OPPOSITION No B 2 685 835

Bit & Brain Technologies, S.L., C/ Maria de Luna, 11 nave 4, 50018, Zaragoza, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen UBC Technology Co., Limited Room D08,Yiben EBusiness Industrial Park No.1063 Chaguang Road, Xili Town, Nanshan District, Shenzhen  518055,  People's Republic of China (applicant), represented by Global IP Law Ltd., Wisteria House, Clarendon Road, South Woodford, London, E18 2AW, United Kingdom (professional representative).

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

DECISION:

1.        Opposition No B 2 685 835 is partially upheld, namely for the following contested goods and services:

Class 9:         Data processing apparatus; computer programs [downloadable software]; monitoring apparatus, electric; couplers [data processing equipment]; computer hardware.

Class 28:         Games; apparatus for games.

Class 35:         Advertising; providing business information via a web site; marketing; personnel management consultancy; systemization of information into computer databases; book-keeping; sponsorship search; commercial administration of the licensing of the goods and services of others; business management consultancy; relocation services for businesses; rental of advertising space; commercial intermediation services; provision of an on-line marketplace for buyers and sellers of goods and services; search engine optimization.

2.        European Union trade mark application No 14 906 101 is rejected for all 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 14 906 101. The opposition is based on European Union trade mark registration No 12 638 292. 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.

1. The goods and services

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

Class 9:         Scientific apparatus and instruments relating to neuroscience, computer programs (downloadable software) and computer software (recorded programs) relating to neuroscience.

Class 35: Advertising, marketing services, business management; business administration, all the aforesaid relating to neuroscience.

Class 42:         Scientific and technological services and research relating to neuroscience, design and development of computer software relating to neuroscience.

The contested goods and services are the following:

Class 9:         Data processing apparatus; counters; computer programs [downloadable software]; transmitters of electronic signals; monitoring apparatus, electric; cameras [photography]; detectors; measuring devices, electric; transformers [electricity]; remote control apparatus; electronic agendas; couplers [data processing equipment]; computer hardware; measures; naval signalling apparatus.

Class 28:         Games; toys; playing cards; badminton rackets; body-building apparatus; archery implements; machines for physical exercises; elbow guards [sports articles]; rods for fishing; twirling batons; apparatus for games; conjuring apparatus; toy models; balls for games; rackets.

Class 35:         Advertising; providing business information via a web site; marketing; personnel management consultancy; systemization of information into computer databases; book-keeping; sponsorship search; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; commercial administration of the licensing of the goods and services of others; business management consultancy; relocation services for businesses; rental of advertising space; commercial intermediation services; provision of an on-line marketplace for buyers and sellers of goods and services; search engine optimization.

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 programs [downloadable software] include as a broader category the opponent’s computer programs (downloadable software) relating to neuroscience in Class 9. 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 data processing apparatus and couplers [data processing equipment] are similar to the opponent’s computer programs (downloadable software) relating to neuroscience in Class 9, as they may coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested computer hardware and the opponent’s computer programs (downloadable software) relating to neuroscience in Class 9 are considered similar. A computer is actually a ‘system’, a combination of components that work together. The hardware devices are the physical components of that system. The hardware is designed to work hand in hand with computer programs. Computer hardware companies also manufacture software; hardware and software have the same distribution channels and target the same professional public (e.g. for use in banking and finance, education, medicine, business or entertainment/recreation) and/or the general public. Moreover, they are complementary.

The contested monitoring apparatus, electric are considered similar to at least an average degree to the opponent’s scientific apparatus and instruments relating to neuroscience since the former may constitute an integrated part of the latter.

The contested counters; transmitters of electronic signals; detectors; measuring devices, electric; transformers [electricity]; remote control apparatus; electronic agendas; measures; naval signalling apparatus have very specific functions that are not directly related to the opponent’s scientific apparatus and instruments relating to neuroscience, computer programs (downloadable software) and computer software (recorded programs) relating to neuroscience in Class 9. Therefore, since their distribution channels, end users and natures are different, and these goods are neither complementary nor in competition, they are deemed dissimilar. A fortiori, they are dissimilar to the opponent’s services in Classes 35 and 42. The opponent’s services in Class 35 are rendered by persons or organizations principally with the object to help in working or management of a commercial undertaking, whereas the opponent’s services in Class 42 include mainly services provided by physics, chemists, engineers or computer specialists in relation to the theoretical and practical aspects in the field of neuroscience. Therefore, these goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

The contested cameras [photography] are devices for taking photographs or capturing moving pictures or video signals. They have no point of contact with the earlier goods covered in the same class by the earlier trade mark and so they are dissimilar to the earlier computer programs (downloadable software) and computer software (recorded programs) relating to neuroscience or to the earlier scientific apparatus and instruments relating to neuroscience, as they do not have the same nature or purpose, they do not share the same distribution channels, they have different producers and methods of use, and they are not in competition or complementary to each other. A fortiori, they are dissimilar to the opponent’s services in Classes 35 and 42, for the same reasons as explained in the previous paragraph.

Contested goods in Class 28

The contested games are similar to the opponent’s computer programs (downloadable software) and computer software (recorded programs) relating to neuroscience in Class 9, since they may coincide in distribution channels, relevant public and producers. Moreover, they might be complementary.

The contested apparatus for games are similar to a low degree to the opponent’s computer programs (downloadable software) and computer software (recorded programs) relating to neuroscience in Class 9, since they may have the same purpose and can coincide in end user. Moreover, they might be complementary.

The contested toys; playing cards; badminton rackets; body-building apparatus; archery implements; machines for physical exercises; elbow guards [sports articles]; rods for fishing; twirling batons; conjuring apparatus; toy models; balls for games; rackets are traditional games, things for children to play with and objects or mechanical items for playing games or sports, respectively. They differ in nature, purpose, usual origin and method of use from the opponent’s goods in Class 9. Furthermore, the compared goods are neither complementary, nor in competition and they have different trade channels. Therefore, these goods are dissimilar. A fortiori, for the reasons set forth above, they are dissimilar to the opponent’s services in Classes 35 and 42.

Contested services in Class 35

The contested advertising and marketing are identically contained in both lists of services.

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. Having said that, the contested sponsorship search; rental of advertising space; provision of an on-line marketplace for buyers and sellers of goods and services are included in the broad category of the opponent’s advertising in Class 35. Therefore, they are identical.

The contested providing business information via a web site; business management consultancy; book-keeping are services aimed to 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. In light of the above definition, these services are considered to be included in the broad category of the opponent’s business management in Class 35. Therefore, they are identical.

The contested personnel management consultancy; commercial administration of the licensing of the goods and services of others; relocation services for businesses consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. Thus, these services overlap with the opponent’s business administration, all the aforesaid relating to neuroscience in Class 35. Therefore, they are identical.

The contested systemization of information into computer databases is a service aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose. Consequently, these services are included are included in the broad category of the opponent’s office functions in Class 35. Therefore, they are identical.

The contested search engine optimisation refers to the process of improving the visibility of a website or a web page in search engines. These services must be considered similar to the opponents’ advertising services in Class 35, since they can have the same purpose (to promote goods and services, reinforcing a client’s position in the market and acquiring competitive advantage through publicity) and, therefore, can be complementary to advertising. They can also be provided by the same undertakings and target the same end users.

The contested commercial intermediation services are usually rendered by companies specialised in this specific field such as business consultants. These services include any ‘consultancy’, ‘business research’, ‘analysis’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to increase market share; how to deal with competitors; how to develop new products; how to communicate with the public; how to market good and services; how to research consumer trends; how to launch new products; how to create a corporate identity; etc. These goods are considered similar to at least a low degree the opponent’s business management in Class 35.

The contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies have a different purpose and nature to the opponent’s services in Class 35. They are not in competition and are normally directed at different end users, the latter being a business-to-business service whereas retail services target the end user. They would not normally come from the same undertakings and are considered dissimilar. The same can be said about the contested wholesale services. A fortiori, they are dissimilar to the opponent’s services in Class 42.

Furthermore, the contested retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies and the opponent’s scientific apparatus and instruments relating to neuroscience, computer programs (downloadable software) and computer software (recorded programs) relating to neuroscience in Class 9 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 same reasoning applies with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services.

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 contested goods and services target public at large, including professionals whereas the earlier mark’s goods and services target a professional public exclusively. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).

The public’s degree of attentiveness vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services, as some of the goods and services are normally purchased on an infrequent basis for a very specific purpose and their price could also be relatively high. Regarding the services at stake, not only their price could be relatively high, but also they could have severe consequences for the functioning of a business.

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 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 non-English-speaking part of the public, because of this part of the public both marks are meaningless and have an average distinctiveness.

The earlier mark is a figurative mark composed of the term ‘USENNS’ written in a fairly standard grey lower case typeface followed by three relatively small dots (two in different shades of orange, the third one in red) irregularly placed on the top right hand side of the mark. Due to the small size of the purely figurative elements of the earlier mark, the Opposition Division considers the verbal element ‘USENNS’ clearly more dominant owing to its size and the position in the sign compared to the three dots.

The contested sign is a figurative sign made up of the sequence of letters ‘USENSE’, written in a fairly standard black bold upper case typeface. The first letter ‘U’ is depicted in shaded green colour, whereas the remaining letters are in black. Thus, the Opposition Division considers the sequence of letters written in black visually more eye-catching.

Visually, the signs coincide in the sequence of letters ‘USEN*S*’, which forms almost all of the contested sign and nearly the entire dominant element of the earlier mark. Moreover, the fact that the letters that the signs have in common, ‘USEN*’, form the beginning of the signs under comparison is especially important, since the consumer reads from left to right or from top to bottom and will perceive this element first. The signs differ in the endings of the common element, i.e. ‘NS’ vs ‘SE’ and the additional figurative device of the earlier mark, both playing a secondary importance for the reasons outlined above.

Regarding the typeface in which the verbal elements of the signs are depicted, this stylisation is fairly standard and will not divert the consumer’s attention away from the elements it seems to embellish.

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

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘USEN(N)S’. For part of the relevant public, the pronunciation differs in the sound of the last letter /E/ of the contested sign. Indeed, the double ‘N’ of the earlier mark does not influence the sound much which makes the marks even more similar. Insofar as the French speaking public is concerned, the last letter ‘E’ of the contested sign will not be pronounced, thus for this part of the relevant public the marks are virtually identical. For the remaining part of the relevant public, the marks under comparison are aurally highly similar.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, Lloyd Schuhfabrik, § 20; Sabèl, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical, partly similar to different degrees and partly dissimilar. The relevant public is the professional public and the level of attention will vary from average to high. The earlier mark has a normal degree of distinctiveness. The signs are visually similar to an average degree and aurally similar to a high degree (or even virtually identical for part of the relevant public), whereas the conceptual comparison remains neutral.

In addition, account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Having said that, it is stressed that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks, in the case at hand, the high (or even virtually identical for the French part of the relevant public – at least insofar as aural comparison is concerned) similarity of the marks offsets the low degree of similarity between some of the services. This reasoning does not apply insofar as the dissimilar goods and services are concerned.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 638 292. 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.

It follows from the above that the contested trade mark must be rejected for those goods and services which are identical or similar to different degrees to the goods and services 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 and services 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

Chantal VAN RIEL

Klaudia MISZTAL

Saida CRABBE

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.