OPPOSITION No B 2 377 078

Dc International Holding B.V., Crown Building North, Hullenbergweg 375, 1101 CR Amsterdam Zuidoost, The Netherlands (opponent), represented by Merkenbureau Bouma B.V., Beurs WTC – Beursplein 37, room 313, 3011 AA Rotterdam, The Netherlands (professional representative)

a g a i n s t

Linxgo S.L., C/ Reyes Católicos Nº 61, 03003 Alicante, Spain (applicant), represented by Padima, Calle Gerona 17, 1º A-B, 03001 Alicante, Spain (professional representative).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 377 078 is partially upheld, namely for the following contested services:

Class 38:         Telecommunication and communication services; Providing access to electronic communications networks, to the Internet and to extranets; Electronic transmission of mail and messages; Internet service provider services; Information relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets; Transferring and disseminating information and data via computer networks and the Internet; Transmission and distribution of information and data via computer networks and the Internet; Electronic distribution of information materials; Website portal services; Providing access to proprietary collections of information; Consultancy and advice, all the aforesaid relating to telecommunications and communications, for the providing of access to electronic communications networks and to the Internet and extranets, to the organisation of business transactions via electronic communications networks, electronic transmission of mail and messages, services of Internet service providers, including where the aforesaid services are provided online from a computer network or via the Internet or extranets; Internet service provider services; Providing of access to, rental of access time to, and linking of data for the Internet, electronic communications networks and electronic databases.

Class 42: IT services; Consulting, design, testing, research, analysis, timesharing, technical support and other technical and advisory services, all relating to computing and computer programming; Website design, creation and hosting services; Research, Development, Software design and updating; Computer database leasing; Facilitation of searching and recovery of data for the Internet, electronic communications networks and electronic databases; Website search engine services; Information, consultancy and advisory services, all relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets; Providing software interfaces available over a network in order to provide personalised access to a global computer information network for the transfer and dissemination of information in the fields of news, science, health, family, home, society, entertainment, sports, education, travel, business and financial information in the nature of text, electronic documents, databases, graphics and audiovisual information; Storage and retrieval of data and information.

2.        European Union trade mark application No 12 342 051 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 342 051. The opposition is based on, inter alia, Benelux trade mark registration No 890 276. 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 Benelux trade mark registration No 890 276.

1. The services

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

Class 37:         Setting up, repair and installation services related to telecommunication apparatus, telecommunication installations and computers.

Class 38:         Telecommunication services; advising in the field of telecommunications; providing access to worldwide communication and information networks; rental of telecommunication apparatus.

Class 42:         Scientifical and technological services, research and design relating thereto; industrial analysis and research services; design and development of computers and software, web hosting and web management.

The contested services are the following:

Class 35:         Providing of information for the promotion of companies and commercial goods, provided online from a database or from the Internet; Information, consultancy and advice relating to business and business management or administration, including services provided online or via the Internet; Online information processing; Advertising, marketing and promotional services; Market research and information services; Promoting the goods and services of others via computer and communication networks; Online retail shops with online distribution of digital media; Buyer to supplier matching services rendered through an online computerized network; Providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks; Invoicing, except for financial affairs; Electronic invoicing, except for financial affairs ; Preparation, negotiation and procurement of contracts for others; Personnel management consultancy; Personnel management; Administration relating to business planning; compilation and Data analysis and Information; maintenance and Indexing of information; Creating indexes of information, websites and other information sources; Organisation of business transactions via electronic communications networks, except for financial affairs ; Indexing of data for the Internet, electronic communications networks and electronic databases; Compilation of data for the Internet, electronic communications networks and electronic databases.

Class 38:         Telecommunication and communication services; Providing access to electronic communications networks, to the Internet and to extranets; Electronic transmission of mail and messages; Internet service provider services; Information relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets; Transferring and disseminating information and data via computer networks and the Internet; Transmission and distribution of information and data via computer networks and the Internet; Electronic distribution of information materials; Website portal services; Providing access to proprietary collections of information; Consultancy and advice, all the aforesaid relating to telecommunications and communications, for the providing of access to electronic communications networks and to the Internet and extranets, to the organisation of business transactions via electronic communications networks, electronic transmission of mail and messages, services of Internet service providers, including where the aforesaid services are provided online from a computer network or via the Internet or extranets; Internet service provider services; Providing of access to, rental of access time to, and linking of data for the Internet, electronic communications networks and electronic databases.

Class 42:         IT services; Consulting, design, testing, research, analysis, timesharing, technical support and other technical and advisory services, all relating to computing and computer programming; Website design, creation and hosting services; Research, Development, Software design and updating; Computer database leasing; Facilitation of searching and recovery of data for the Internet, electronic communications networks and electronic databases; Website search engine services; Information, consultancy and advisory services, all relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets; Providing software interfaces available over a network in order to provide personalised access to a global computer information network for the transfer and dissemination of information in the fields of news, science, health, family, home, society, entertainment, sports, education, travel, business and financial information in the nature of text, electronic documents, databases, graphics and audiovisual information; Storage and retrieval of data and information.

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 services in Class 35

The contested services in this class are various types of advertising, marketing and promotional services, together with business administration business management, recruitment services and data analysis and clerical services. The opponent’s services are telecommunications apparatus installation and repair services, telecommunications services and scientific, technological and research services together with software development. The contested services have different nature, purpose and methods of use than all the services of the opponent. They do not coincide in their origins or distribution channels. The services are dissimilar.

Contested services in Class 38

Telecommunication services; Providing access to electronic communications networks, to the Internet and to extranets are identically contained in both lists of services (including synonyms).

The contested communication services; Electronic transmission of mail and messages; Internet service provider services; Information relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets; Transferring and disseminating information and data via computer networks and the Internet; Transmission and distribution of information and data via computer networks and the Internet; Electronic distribution of information materials; Website portal services; Providing access to proprietary collections of information; Consultancy and advice, all the aforesaid relating to telecommunications and communications, for the providing of access to electronic communications networks and to the Internet and extranets, to the organisation of business transactions via electronic communications networks, electronic transmission of mail and messages, services of Internet service providers, including where the aforesaid services are provided online from a computer network or via the Internet or extranets; Internet service provider services; Providing of access to, rental of access time to, and linking of data for the Internet, electronic communications networks and electronic databases are included in the broad category of the opponent’s Telecommunication services. Therefore, they are identical.

Contested services in Class 42

The contested IT services; Research, Development, Software design and updating; Consulting, design, testing, research, analysis, timesharing, technical support and other technical and advisory services, all relating to computing and computer programming; Website design, creation and hosting services; Computer database leasing; Facilitation of searching and recovery of data for the Internet, electronic communications networks and electronic databases; Website search engine services; Information, consultancy and advisory services, all relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets; Providing software interfaces available over a network in order to provide personalised access to a global computer information network for the transfer and dissemination of information in the fields of news, science, health, family, home, society, entertainment, sports, education, travel, business and financial information in the nature of text, electronic documents, databases, graphics and audiovisual information; Storage and retrieval of data and information are included in the broad category of, or overlap with, the opponent’s technological services, research and design relating thereto and design and development of computers and 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 are directed at the public at large and customers with specific professional knowledge or expertise.

The degree of attention varies from average to higher than average depending on the level of technical knowledge an expertise needed.  

3. The signs

LINX
Earlier trade mark	Contested sign

The relevant territory is the Benelux countries.

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 distinctive word mark.

The contested sign is a figurative mark. It contains a word element in black, red and yellow and a device element formed of two interlaced open circles above it, all these elements being placed on a rectangular grey background.

The word element of the contested sign has no meaning for the relevant public and is, therefore, distinctive. The mark has no elements that are more distinctive or dominant than other elements.

When signs consist of both verbal and figurative components, as is the case with the contested mark, then 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).

Furthermore, the consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the element LINX, forming the earlier mark and being  entirely incorporated in the beginning of the contested sign. The signs differ in the remaining letters GO, which are perceived separately due to the different colours used, of the contested sign and in the device elements of that mark, none of which are present in the earlier mark.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters LINX, present identically in both signs.  The pronunciation differs in the sound of the letters GO of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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.

5. Global assessment, other arguments and conclusion

The services are partially identical and partially dissimilar. The similarities and dissimilarities between the marks have been established. The level of attention varies from average to higher than average.

As explained above, when a sign consists of both word and figurative components, as is the case with the contested mark, the word component of the sign usually has a stronger impact on the consumer than the figurative component.

The marks share the same letters LINX. This is the whole earlier mark encompassed in the beginning of the contested mark, where the consumer focuses more. Consequently, this coincidence has to be taken into account when assessing the likelihood of confusion between the marks.

The additional letters GO are placed at the end of the contested mark and will tend to be somewhat overlooked. Moreover, the two signs, in view of the coinciding element, could be perceived as two different product lines coming from the same undertaking or economically-linked undertakings. The marks have no meaning.

The simple stylisation in the contested mark, comprising use of colours in the differing letters, and the use of multi-coloured device element of uncertain definition, will tend to be overlooked and do not deflect the attention from the word element upon which attention will be concentrated. The two word elements are confusingly similar for the consumer aurally and visually.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, ‘Lloyd’). Even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 890 276.

It follows from the above that the contested trade mark must be rejected for the services found to be identical 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 marks:

-International registration No 1 084 443A ‘LINX’ designating Bulgaria, Czech Republic, Denmark, Germany, Estonia, Greece, France, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovenia, Slovakia, Finland and Sweden for services in classes 37, 38 and 42,

-International registration No 981 037  designating   Bulgaria, Czech Republic, Denmark, Germany, Estonia, Greece, France, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Slovenia, Slovakia, Finland and Sweden for services in classes 37, 38 and 42,

-Benelux trade mark registration No 833 786  for services in classes 37, 38 and 42.

The earlier mark  IR No 1 084 443A is identical to the one which has been compared and covers the same scope of services in classes 37, 38 and 42, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

The two other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain elaborate figurative elements, which are not present in the contested trade mark, and have no word elements. Moreover, they cover the same scope of the services in classes  38 and 42. Even if the scope of services in class 37 is wider (covering Construction; repair, installation services) the outcome will not be different as these services are clearly different to the contested services and also because of the clear differences in the signs.  Therefore, the outcome cannot be different with respect to 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 shall decide a different apportionment of costs.

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

The Opposition Division

Francesca DINU

Erkki MÜNTER

Julie GOUTARD

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.