ORBI Diffusion | Decision 2653536 – Trademarkers Legal Blog

OPPOSITION No B 2 653 536

Push Technology Limited, 110 High Street, Maidenhead, Berkshire SL6 1PT, United Kingdom (opponent), represented by CMS Cameron Mckenna Nabarro Olswang, Cannon Place 78 Cannon St. London EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

Orbi Diffusion, 6 chemin de Curebourse , 33720 Barsac (applicant).

On 12/10/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 653 536 is partially upheld, namely for the following contested services:

Class 38: Provision of access to web pages; Computerised consultation of telephone directories; Providing access to databases; Arranging access to databases on the internet; Providing access to databases in computer networks; Providing access to weblogs; Providing access to telecommunication channels for teleshopping services; Providing access to multimedia content online; Provision of access to data via the Internet; Provision of access to data on communication networks; Providing of access to web forums; Providing user access to search engines; Providing access to platforms and portals on the Internet; Providing user access to platforms on the Internet; Providing access to Internet portals for third parties; Providing user access to portals on the Internet; Providing access to Internet chatrooms; Providing access to websites on the Internet or any other communications network; Provision of access to an Internet portal featuring video-on-demand programs; Provision of electronic sound links; Communications services for accessing a data-base; Web site forwarding services; Electronic message collection and transmission; Data communication by electronic mail; Computer communications for the transmission of information; Communication via computer terminals, by digital transmission or by satellite; Electronic communication by means of chatrooms, chat lines and Internet forums; Communications via a global computer network or the internet; Online document delivery via a global computer network; Streaming audio and video material on the Internet; Distribution of data or audio visual images via a global computer network or the internet; Message sending via a website; Message sending via computer networks; Electronic message sending, receiving and forwarding; Provision of access to the internet for others; Providing access to data in computer networks; Providing access to information via the Internet; Providing access to information via data networks; Providing multiple-user access to a global computer network; Providing access to a global computer network for the transfer and dissemination of information; Providing videoconferencing facilities; Providing access to and leasing access time to computer networks; Rental of access time to global computer networks; Rental of access time to a database server; Providing telecommunications connections to a global communication network or databases; Providing Internet chatrooms and Internet forums; Forwarding messages of all kinds to Internet addresses [web messaging]; Relaying of messages [electronic]; Data bank interconnection services; Providing access to computer networks; Electronic data interchange services; Electronic exchange of data stored in databases accessible via telecommunication networks; Data communication services; Communication services between data banks; Computer communications services for the transmission of information; Electronic mail and messaging services; Webcasting services; Delivery of messages and data by electronic transmission; E-mail forwarding services; Electronic transmission of data; Video, audio and television streaming services; Transferring and disseminating information and data via computer networks and the Internet; Transmission of multimedia content via the Internet; Transmission of data and information by computer and electronic communication means; Transmission of data or audio visual images via a global computer network or the internet; Transmission of data, audio, video and multimedia files, including downloadable files and files streamed over a global computer network; Electronic transmission of mail and messages; Transmission and distribution of data or audiovisual images via a global computer network or the Internet; Computer transmission of information accessed via a code or a terminal; Electronic transmission of images, photographs, graphic images and illustrations over a global computer network; Electronic transmission of messages, data and documents; Leasing satellite transmission capacity; Rental of broadcasting time by satellite; Provision of teleconferencing facilities; Broadcasting of audiovisual and multimedia content via the Internet; Radio and television broadcasting, also via cable networks; Broadcasting of video and audio programming over the Internet; Streaming of television over the Internet; Radio and television program broadcasting; Audio and video broadcasting services provided via the Internet; Transmission of user-generated content via the Internet; Transmission of radio and television programmes by satellite; Teleconferencing services; Facsimile transmission; Communication of information by electronic means; Data communication by electronic means; Providing facilities and equipment for video conferencing; Providing video conferencing services; Message collection and transmission services; Electronic communications services relating to credit card authorization; Electronic communication services for preparing financial information; Communications services for the exchange of data in electronic form; Data communication services accessible by password; Transmission of database information via telecommunications networks; Transmission of information by electronic communications networks; Transmission of information for business purposes; Transmission of information for domestic purposes; Data transmission for others; Transmission of messages, data and content via the Internet and other communications networks; Transmission of sound, video and information; Electronic transmission and retransmission of sounds, images, documents, messages and data; Digital transmission of data; Satellite transmission of sounds, images, signals and data; Videoconferencing.

Class 42: Database design and development; Design and development of new technology for others; Product design and development; Web site design consultancy; Providing information in the field of product design; Compilation of web pages for the Internet; Homepage and webpage design; Designing and developing webpages on the internet; Designing and implementing web sites for others; Consultancy with regard to webpage design; Creating web pages for others; Programming of software for importing and managing data; Consultancy relating to the design of home pages and Internet sites; Providing space on the internet for weblogs; Hosting of digital content on the internet; Hosting of customized web pages; Hosting web portals; Providing temporary use of on-line non-downloadable software for database management; Providing temporary use of on-line non-downloadable software for importing and managing data; Research and development of new products.

2. European Union trade mark application No 14 753 107 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

The opponent filed an opposition against all the services of European Union trade mark application No 14 753 107 for the word mark ‘ORBI Diffusion’. The opposition is based on the following earlier trade marks:

EUTM No 10 249 688 for the word mark ‘DIFFUSION’;
EUTM registration No 10 249 712 for the figurative mark ‘’;
EUTM registration No 11 168 127 for the figurative mark ‘’;
UK trade mark registration No 2 612 816 for the word mark ‘DIFFUSION’;
UK trade mark registration No 2 612 943 for a series of two figurative marks ’ ’;/ ‘’;
The non-registered trade mark ‘DIFFUSION’ used in the course of trade in the UK.

The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR in relation to the earlier registered trade marks and Article 8(4) EUTMR for the non-registered trade mark.

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 European Union trade mark No 11 168 127 for the figurative mark ‘ Image representing the Mark ’ and on European Union trade mark No 10 249 688 for the word mark ‘DIFFUSION’.

The goods and services

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

European Union trade mark No 11 168 127 ’ Image representing the Mark ’ (referred to as earlier trade mark No 1 below)

Class 9: Computer software; databases; publications and software supplied on line from a computer database or via the Internet or other communications networks; computer software to enable monitoring, capturing and dissemination of information over the Internet or other communications networks; computer software to enable monitoring, capturing and dissemination of real-time information over the Internet or other communications networks; computer software for real-time, event-based monitoring, analysis and dissemination of information; computer software for the analysis and dissemination of information over the Internet or other communications networks; computer software for generating alerts over the Internet or other communications networks; computer software for information replay and relay; computer software for information replay and relay over the Internet or other communications networks; parts and fittings for all the aforesaid goods; all of the aforesaid relating to a messaging platform for the real-time delivery of data; none of the aforementioned in respect of software dedicated to video, image and especially 3D, virtual objects and augmented reality.

Class 38: Telecommunications; provision of access to computer databases; provision of access to computer databases via the internet or other communications networks; computer aided transmission of data, information, messages and images; data transmission services, data transfer services; data transmission services; telecommunication of information via the Internet and other computer and communications networks; data transfer services; providing of online access to data and information; providing of access to data and information over the Internet; transmission of messages, data and information via the Internet and other computer and communications networks; providing access to non-downloadable software; providing access to non downloadable software to enable monitoring, capturing and dissemination of real-time information via the Internet or other communications networks; providing access to non-downloadable software to enable content providers to track real-time information; providing access to non-downloadable software to enable tracking of real-time information via the internet or other communications network; information, advisory and consultancy services relating to all the aforesaid services; including such services provided on-line via a computer database or via the internet or other communications networks.

Class 42: Design and development of computer hardware and software; application provider services (ASP); computer consultancy services; consultancy services in relation to information technology; information, advisory and consultancy services relating to the aforesaid services; including such services provided on-line via a computer database or via the Internet or other communications networks; all of the aforesaid relating to a messaging platform for the real-time delivery of data; none of the aforementioned in respect of software dedicated to video, image and especially 3D, virtual objects and augmented reality.

EU trade mark No 10 219 688 ‘DIFFUSION’ (referred to as earlier trade mark No 2 below)

Class 9: Nautical, surveying, photographic, cinematographic, optical, weighing, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; magnetic data carriers, recording discs; data, images and sound recordings stored in machine readable form; databases; publications and software supplied on line from a computer database or via the Internet or other communications networks; none of the aforementioned goods being computer hardware; none of the aforementioned in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality.

Class 38: Provision of access to computer databases; provision of access to computer databases via the internet or other communications networks; providing of online access to data and information; providing of access to data and information over the Internet.

The contested services are the following, after two limitations on the part of the applicant:

Class 41: Provision of electronic publications (not downloadable); Electronic desktop publishing; Providing electronic publications from a global computer network or the Internet, not downloadable; Editing of printed matter containing pictures, other than for advertising purposes; Services for the publication of newsletters; Publication of calendars of events; Publishing of documents; Publication of newspapers, periodicals, catalogs and brochures; Publication of electronic newspapers accessible via a global computer network; Publication of electronic magazines; Publication of printed matter in electronic form; Publication of printed matter, other than publicity texts, in electronic form; Publication of texts and images, including in electronic form, except for advertising purposes; Publication and editing of printed matter; Electronic publication of texts and printed matter, other than publicity texts, on the Internet; Publishing services (including electronic publishing services); Writing services for blogs; Providing on-line publications; Publishing services carried out by computerised means; Conducting of competitions on the Internet; Organisation of competitions and awards; Organisation of games and competitions; Organisation of seminars and conferences; Arranging and conducting of conferences; Arranging and conducting of seminars and workshops; Arranging and conducting of games; Prize draws [lotteries]; Microfilming for others; Provision and management of sporting events; Courses (Training -) relating to philosophical subjects; Conducting courses, seminars and workshops; Entertainment provided via the internet; Internet games (non-downloadable); Provision of entertainment information via the Internet; Provision of multimedia entertainment programs by television, broadband, wireless and on-line services; Providing online entertainment in the nature of game shows; Provision of on-line computer games; Organising of festivals; Organising of sporting events, competitions and sporting tournaments; Entertainment services provided on-line from a computer database or the internet; Game services provided by means of communications by computer terminals or mobile telephone; Games services provided via computer networks and global communication networks; Electronic game services and competitions provided by means of the internet; Providing a computer game that may be accessed by users on a global network and/or the internet; Game services provided on-line from a computer network; Provision of games by means of a computer based system; Information relating to entertainment, provided on-line from a computer database or the internet.

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

The term ‘including’, used in the opponent’s list of services in Classes 38 and 42, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 services in Class 38

The contested Provision of access to web pages; Computerised consultation of telephone directories; Providing access to databases; Arranging access to databases on the internet; Providing access to databases in computer networks; Providing access to weblogs; Providing access to telecommunication channels for teleshopping services; Providing access to multimedia content online; Provision of access to data via the Internet; Provision of access to data on communication networks; Providing of access to web forums; Providing user access to search engines; Providing access to platforms and portals on the Internet; Providing user access to platforms on the Internet; Providing access to Internet portals for third parties; Providing user access to portals on the Internet; Providing access to Internet chatrooms; Providing access to websites on the Internet or any other communications network; Provision of access to an Internet portal featuring video-on-demand programs; Provision of electronic sound links; Communications services for accessing a data-base; Web site forwarding services; Electronic message collection and transmission; Data communication by electronic mail; Computer communications for the transmission of information; Communication via computer terminals, by digital transmission or by satellite; Electronic communication by means of chatrooms, chat lines and Internet forums; Communications via a global computer network or the internet; Online document delivery via a global computer network; Streaming audio and video material on the Internet; Distribution of data or audio visual images via a global computer network or the internet; Message sending via a website; Message sending via computer networks; Electronic message sending, receiving and forwarding; Provision of access to the internet for others; Providing access to data in computer networks; Providing access to information via the Internet; Providing access to information via data networks; Providing multiple-user access to a global computer network; Providing access to a global computer network for the transfer and dissemination of information; Providing videoconferencing facilities; Providing access to and leasing access time to computer networks; Rental of access time to global computer networks; Rental of access time to a database server; Providing telecommunications connections to a global communication network or databases; Providing Internet chatrooms and Internet forums; Forwarding messages of all kinds to Internet addresses [web messaging]; Relaying of messages [electronic]; Data bank interconnection services; Providing access to computer networks; Electronic data interchange services; Electronic exchange of data stored in databases accessible via telecommunication networks; Data communication services; Communication services between data banks; Computer communications services for the transmission of information; Electronic mail and messaging services; Webcasting services; Delivery of messages and data by electronic transmission; E-mail forwarding services; Electronic transmission of data; Video, audio and television streaming services; Transferring and disseminating information and data via computer networks and the Internet; Transmission of multimedia content via the Internet; Transmission of data and information by computer and electronic communication means; Transmission of data or audio visual images via a global computer network or the internet; Transmission of data, audio, video and multimedia files, including downloadable files and files streamed over a global computer network; Electronic transmission of mail and messages; Transmission and distribution of data or audiovisual images via a global computer network or the Internet; Computer transmission of information accessed via a code or a terminal; Electronic transmission of images, photographs, graphic images and illustrations over a global computer network; Electronic transmission of messages, data and documents; Leasing satellite transmission capacity; Rental of broadcasting time by satellite; Provision of teleconferencing facilities; Broadcasting of audiovisual and multimedia content via the Internet; Radio and television broadcasting, also via cable networks; Broadcasting of video and audio programming over the Internet; Streaming of television over the Internet; Radio and television program broadcasting; Audio and video broadcasting services provided via the Internet; Transmission of user-generated content via the Internet; Transmission of radio and television programmes by satellite; Teleconferencing services; Facsimile transmission; Communication of information by electronic means; Data communication by electronic means; Providing facilities and equipment for video conferencing; Providing video conferencing services; Message collection and transmission services; Electronic communications services relating to credit card authorization; Electronic communication services for preparing financial information; Communications services for the exchange of data in electronic form; Data communication services accessible by password; Transmission of database information via telecommunications networks; Transmission of information by electronic communications networks; Transmission of information for business purposes; Transmission of information for domestic purposes; Data transmission for others; Transmission of messages, data and content via the Internet and other communications networks; Transmission of sound, video and information; Electronic transmission and retransmission of sounds, images, documents, messages and data; Digital transmission of data; Satellite transmission of sounds, images, signals and data; Videoconferencing all are telecommunications services and are therefore included in the opponent’s telecommunications; including such services provided on-line via a computer database or via the internet or other communications networks as covered by earlier trade mark No 1). Therefore, they are identical.

Contested services in Class 41

The opponent’s trade marks are registered, in Class 9, for publications supplied on line from a computer database or via the Internet or other communications networks. The specification further restricts those publications to those not being computer hardware and not in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality in respect of software dedicated to video, image and especially 3D, virtual objects and augmented reality. The Opposition Division interprets the latter restriction as excluding publications whose subject matter is related to software dedicated to video, etc.

The contested services of provision of electronic publications (not downloadable); Providing electronic publications from a global computer network or the Internet, not downloadable; Publication of electronic newspapers accessible via a global computer network; Publication of electronic magazines; Publication of printed matter in electronic form; Publication of printed matter, other than publicity texts, in electronic form; Publication of texts and images, including in electronic form, except for advertising purposes; Electronic publication of texts and printed matter, other than publicity texts, on the Internet; Providing on-line publications; Publishing services carried out by computerised means; Services for the publication of newsletters; Publication of calendars of events; Publishing of documents; Publication of newspapers, periodicals, catalogs and brochures; Publishing services (including electronic publishing services) concern publications of all kinds except those for advertising purposes (since such publication services would be included in Class 35 as advertising services) and either explicitly relate, or may relate, to the publication of electronic content.

There is a difference in nature between the abovementioned opponent’s goods and contested services to the extent that the services refer to immaterial activities whereas the goods refer to wares albeit virtual ones in this case. However, the difference in nature cannot cancel the fact that these goods and services are provided by the same companies and that there is a narrow link of complementarity between them to the extent that the goods are the subject or end result of the services. Furthermore, they target the same public and fulfil the same purpose. Consequently, they are similar (16/02/2017, R 544/2016-2, G GAMING1 (fig.) / 2 in 1 Gaming, § 52-53).

The contested electronic desktop publishing refers to the process of using the computer and specific software to combine text and graphics in order to produce documents such as newsletters, brochures, books and webpages. Therefore, the above reasoning applies when comparing electronic desktop publishing with the opponent’s publications supplied on line from a computer database or via the Internet or other communications networks; none of the aforementioned goods being computer hardware; none of the aforementioned in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality. These goods and services have the same purpose which is to divulge content and may be provided by the same companies. The intended public is also the same and there is a close link of complementarity between them. Therefore, they are similar.

The contested conducting of conferences; conducting of seminars and workshops; courses (Training -) relating to philosophical subjects; conducting courses, seminars and workshop refer to activities which have or can have an educational purpose. The opponent’s publications supplied on line from a computer database or via the Internet or other communications networks; none of the aforementioned goods being computer hardware; none of the aforementioned in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality include published materials for educational purposes. Therefore, these goods and services have the same purpose namely divulging educational information/content and target the same consumers. In order to supply educational services it is both helpful and usual to use educational publications such as teaching manuals, etc.. Service providers offering any kind of course often hand out these goods to participants as learning supports. Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, these goods and services are considered similar.

Furthermore, although the contested editing of printed matter containing pictures, other than for advertising purposes; publication and editing of printed matter refers to the issuing (editing) and publication of paper publications, hence to information made available on a physical support which differs in nature from the opponent’s publications supplied on line from a computer database or via the Internet or other communications networks; none of the aforementioned goods being computer hardware; none of the aforementioned in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality, these goods and services still have the same purpose namely divulging information/content and target the same consumers. Furthermore, companies specialising in publications very often offer their goods in both electronic and paper formats. Therefore, those contested services are similar to a low degree to the opponent’s goods.

The contested microfilming for others is the process of photographic reproduction of documents or images that are one-eighth to one-fiftieth of their original size, usually on a 16 or 25 mm film. These services are similar to a low degree to the opponent’s optical apparatus and instruments; none of the aforementioned goods being computer hardware; none of the aforementioned in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality of earlier mark No 2) to the extent that companies which offer microfilming services for others usually commercialise microfilm viewers in the same way that services of photography and photographic cameras are usually available from the same outlets. Furthermore, these goods and services are intended for the same public and are strictly complementary, one being indispensable for the other.

In the Opposition Division’s view, the opponent’s computer software; software supplied on line from a computer database or via the Internet or other communications networks; none of the aforementioned goods being computer hardware; none of the aforementioned in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality do not include game software to the extent that game software is closely related to video, image, 3D, virtual objects and augmented reality. In other words, the opponent’s software products are not games or for entertainment purposes. Therefore, the contested services of entertainment provided via the internet; Internet games (non-downloadable); Providing online entertainment in the nature of game shows; Provision of on-line computer games; Entertainment services provided on-line from a computer database or the internet; Game services provided by means of communications by computer terminals or mobile telephone; Games services provided via computer networks and global communication networks; Electronic game services and competitions provided by means of the internet; Providing a computer game that may be accessed by users on a global network and/or the internet; Game services provided on-line from a computer network; Provision of games by means of a computer based system have no points of contact with the opponent’s software supplied on line from a computer database or via the Internet or other communications networks; none of the aforementioned goods being computer hardware; none of the aforementioned in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality since these goods and services differ in nature and purpose and are usually not provided by the same companies or through the same distribution channels. Furthermore, they are neither in competition or complementary. The abovementioned services related to the provision of online games and entertainment are even further removed from the opponent’s remaining goods and services which are databases, publications, specific software not related to entertainment, various apparatus and instruments with specific purposes not related to entertainment, data carriers and recorded content in Class 9; telecommunication services in Class 38; IT related services in Class 42. These goods and services have different natures and purposes and differ in their manufacturers/providers and distribution channels, and are not complementary or in competition either. In particular, it is noted that the fact that some of the contested entertainment services are provided online namely that they require telecommunication software and services of telecommunications for which the opponent’s trade mark is registered does not denote a narrow link of complementarity since such a stance would lead to finding complementarity between telecommunications services (of software) on the one hand and any online services in any field on the other hand (such as online retail services, online translation services, online banking services, etc.). Therefore, the abovementioned contested services are dissimilar.

The above reasoning leading to dissimilarity also applies to all of the remaining services in the field of entertainment as well as those in the fields of sports, namely conducting of competitions on the Internet; Organisation of competitions and awards; Organisation of seminars and conferences; Arranging of conferences; Arranging of seminars and workshops; Organisation of games and competitions; Arranging and conducting of games; Prize draws [lotteries]; Provision and management of sporting events; Provision of entertainment information via the Internet; Provision of multimedia entertainment programs by television, broadband, wireless and on-line services; Organising of festivals; Organising of sporting events, competitions and sporting tournaments; Information relating to entertainment, provided on-line from a computer database or the internet. These services have no points of contact with the opponent’s goods and services as regards the previously mentioned applicable criteria of the comparison. In particular, it is noted that the services consisting of organising conferences/seminars are purely logistical and administrative services to which the reasoning mentioned above in relation to educational services does not apply. Neither have the contested writing services for blogs which consist of providing articles for blogs. These services differ from all of the opponent’s goods and services. In particular, these services are not similar to the opponent’s publications in Class 9. Writing articles for blogs is a literary activity which is available via very specific distribution channels. The services are provided by professional writers not by companies that provide electronic publications whose purpose is not to elaborate the written content of the publications in question but just to take care of making it available for third parties. Therefore, the remaining services in Class 41 are also dissimilar.

The opponent argues that its marks cover all the general indications of some class headings and that, according to the Office’s practice they should be considered to ‘capture the vast majority of items in the Nice class alphabetical lists concerned at the date of filing of the relevant EUTM’. What the Office’s guidelines actually indicate is that the use of the general indications of the class headings will be interpreted as including all the goods and services clearly covered by the literal meaning of the general indications. In the present case, the only class heading reflected in the earlier marks’ specifications is the class heading of Class 38, namely ‘telecommunications’. According to the Opposition Division, no specific service falling within the literal meaning of this term/general indication ‘telecommunications’ is likely to invalidate the above finding of dissimilarity between the opponent’s services in Class 38 and the remaining contested goods in Class 41. Furthermore, the opponent has not provided any specific example either. The opponent’s argument is therefore to be set aside.

Contested services in Class 42

The contested design and development of new technology for others; product design and development; research and development of new products include as broader categories, the opponent’s design and development of computer hardware; including such services provided online via a computer database or via the Internet or other communications network; all of the aforesaid relating to a messaging platform for the real-time delivery of data; none of the aforementioned in respect of software dedicated to video, image and especially 3D, virtual objects and augmented reality of earlier mark No 1). Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested providing information in the field of product design overlaps with the opponent’s computer consultancy services; consultancy services in relation to information technology; including such services provided online via a computer database or via the Internet or other communications network; all of the aforesaid relating to a messaging platform for the real-time delivery of data; none of the aforementioned in respect of software dedicated to video, image and especially 3D, virtual objects and augmented reality of earlier mark No 1). Therefore these services are identical.

The contested programming of software for importing and managing data is highly similar to the opponent’s design of computer software including such services provided on-line via a computer database or via the Internet or other communications networks; all of the aforesaid relating to a messaging platform for the real-time delivery of data; none of the aforementioned in respect of software dedicated to video, image and especially 3D, virtual objects and augmented reality of earlier mark No 1 to the extent that those services are provided by IT companies and distributed through the same channels, share the same nature and are very close in purpose since they are specifically related to the management of data (import and management of data versus transmission/delivery of data). They are also intended for the same public.

The contested database design and development; web site design consultancy; homepage and webpage design; compilation of web pages for the Internet; Designing and developing webpages on the internet; Designing and implementing web sites for others; Consultancy with regard to webpage design; Creating web pages for others; Consultancy relating to the design of home pages and Internet sites; Providing space on the internet for weblogs; Hosting of digital content on the internet; Hosting of customized web pages; Hosting web portals; Providing temporary use of on-line non-downloadable software for database management; Providing temporary use of on-line non-downloadable software for importing and managing data are services in the field of information technology which are at least similar to the opponent’s consultancy services in relation to information technology; including such services provided on-line via a computer database or via the Internet or other communications networks; all of the aforesaid relating to a messaging platform for the real-time delivery of data; none of the aforementioned in respect of software dedicated to video, image and especially 3D, virtual objects and augmented reality of earlier mark No 1) to the extent that they are services in the same field (information technology) hence of the same nature, provided by the same companies through the same distribution channels and targeting the same public.

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 to varying degrees are either directed at both the public at large and specialised business customers with specific professional knowledge or expertise such as those related to the provision of publications or exclusively at business customers, such as the services of database design and development.

The public’s degree of attentiveness may vary from average to high, depending on the intended purpose or terms and conditions of the purchased goods and services.

The signs

Image representing the Mark

DIFFUSION

ORBI Diffusion

Earlier trade marks

Contested sign

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 opponent’s figurative earlier mark consists of the stylised word ‘DIFFUSION’, in which the letter ‘O’ may be perceived by part of the public as the symbol commonly used on Power ON/OFF switches of many kinds of apparatus. The earlier verbal trade mark is the word ‘DIFFUSION’.

The contested sign consists of the juxtaposed verbal elements ‘ORBI Diffusion’.

The relevant territory is the European Union. 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). This means that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element is the verbal element ‘DIFFUSION’. When assessing the similarity of the signs, the degree of distinctiveness of the common element (or elements) must be taken into account. The more distinctive the common element is, the higher the degree of similarity in each aspect of the comparison (visual, phonetic and conceptual). Therefore, a finding that the common element has a limited distinctiveness will lower the similarity, with the consequence that it may be more difficult to establish that the public may be confused about origin.

In view of the foregoing, the Opposition Division will first examine the opposition in relation to the part of the public for which the coinciding element ‘DIFFUSION’ has a normal degree of distinctiveness. This is the case for, inter alia, the Dutch-, Polish- or Slovak-speaking part of the public. For this part of the public, the word ‘DIFFUSION’ either evokes no meanings or may be associated with the specialised words ‘Diffusie’ in Dutch, ‘Dyfuzja’ in Polish and ‘Difúzia‘ in Slovak, which refer to the ‘chemical process consisting of net movement of molecules or atoms from a region of high concentration (or high chemical potential) to a region of low concentration (or low chemical potential)’, a concept that is not related to the goods and services at issue.

In contrast, for other parts of the public, for instance, the French-, English-, and Spanish-speaking parts of the public, the coinciding element is highly likely to be perceived as a weak or non-distinctive element given its meanings (among others) of ‘broadcasting’ in French and Spanish or ‘spreading’ (transmitting) (news or knowledge) in all three languages, which the public in question would no doubt perceive as the purpose of the telecommunication services in Class 38 and of publication or educational services in Class 41, hence as a non-distinctive element.

As regards the other verbal element of the contested sign ‘ORBI’, it is used in most languages of the European Union including Dutch, Polish and Slovak, in the expression ‘urbi et orbi’ which denotes a papal address and apostolic blessing given to the city of Rome and to the entire world by the Roman pontiff on certain solemn occasions. However, the word on its own is not likely to be understood. ‘ORBI’ is, therefore a meaningless element of the sign, of average distinctiveness.

As far as the earlier figurative mark is concerned the specific stylisation including of the letter ‘O’ merely has a decorative purpose whereas the verbal element is its main distinctive component.

Visually, the signs coincide in the verbal element ‘DIFFUSION’ which is the only verbal element of the earlier marks and the most distinctive component as regards the figurative one. It will also be perceived as an independent and distinctive element in the contested sign. Notwithstanding the fact that the differing element ‘ORBI’ is placed at the beginning of the contested sign, which is the part that catches first the attention of the public and which is usually given more importance, the coincidence remains very clearly perceptible.

Given the applicant’s arguments concerning the difference in the case of ‘DIFFUSION’ in the earlier marks and ‘Diffusion’ in its own application, it is clarified that word marks are protected for the word itself not its representation. Therefore, since the contested sign (as well as one of the earlier marks) is verbal, the different case is irrelevant in this visual comparison.

Therefore, and also bearing in mind the fact that the coincidence is in the clearly longer element of the contested sign (nine letters versus four for the differing element ‘ORBI’), the signs are visually similar to at least 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 three syllables of the word ‘DIFFUSION’ and differs in the two syllables of the word ‘ORBI’. The fact that the difference is placed at the beginning of the contested sign is counterbalanced by the fact that the earlier mark is entirely included in the contested sign and by the greater length of the coinciding element. Therefore the signs are aurally similar to at least an average degree.

Conceptually, for part of the public considered the signs have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For part of the public, the element ‘DIFFUSION’ of both signs may evoke the chemical process previously defined. However the fact that this is concept is not immediately perceptible because ‘DIFFUSION’ is not the actual word in those languages weakens the conceptual similarity, which is considered to be low.

For the part of the public that perceives only the concept of the ‘POWER ON/OFF’ in the figurative earlier mark, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, owing to the coincidence in the distinctive element ‘DIFFUSION’ which amounts to the entire verbal element of the earlier marks, the signs are visually and aurally similar to at least an average degree and, for part of the public considered, conceptually similar to a low degree.

The contested services are partly identical and similar to varying degrees, and partly dissimilar to the opponent’s goods and services. The earlier marks are of average distinctiveness and the degree of attention of the public varies from average to high.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention 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 the above, in spite of the difference in the word element ‘ORBI’ and in the specific representation of the word ‘DIFFUSION’ in the figurative earlier mark, there is a likelihood of confusion between the signs.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of, at least, the Dutch-, Polish- and Slovak-speaking consumers. 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 partly well-founded on the basis of the opponent’s European Union trade mark registrations taken into account.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark, including those which are similar to a low degree bearing in mind the important similarity between the signs.

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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

EUTM No 10 249 712 for the figurative mark ‘’;
UK trade mark No 2 612 816 for the word mark ‘DIFFUSION’;
UK trade mark No 2 612 943 for the figurative mark ‘’.

These other earlier marks cover the same goods and services as the figurative trade mark which has been compared with the only difference as regards earlier EUTM No 10 249 712 that the services related to the provision of access to non-downloadable software are classified in Class 42 instead of in Class 38 in all of the other specifications. Therefore, the outcome cannot be different with respect to the contested services found dissimilar; no likelihood of confusion exists for those services.

For the reasons previously explained any enhanced distinctiveness of those marks would not change the outcome reached.

Therefore, the examination of the opposition must proceed in relation to the other grounds invoked, starting with Article 8(5) EUTMR, as far as the remaining dissimilar services are concerned namely the following:

Class 41: Writing services for blogs; Conducting of competitions on the Internet; Organisation of competitions and awards; Organisation of games and competitions; Organisation of seminars and conferences; Arranging of conferences; Arranging of seminars and workshops; Arranging and conducting of games; Prize draws [lotteries]; Provision and management of sporting events; Entertainment provided via the internet; Internet games (non-downloadable); Provision of entertainment information via the Internet; Provision of multimedia entertainment programs by television, broadband, wireless and on-line services; Providing online entertainment in the nature of game shows; Provision of on-line computer games; Organising of festivals; Organising of sporting events, competitions and sporting tournaments; Entertainment services provided on-line from a computer database or the internet; Game services provided by means of communications by computer terminals or mobile telephone; Games services provided via computer networks and global communication networks; Electronic game services and competitions provided by means of the internet; Providing a computer game that may be accessed by users on a global network and/or the internet; Game services provided on-line from a computer network; Provision of games by means of a computer based system; Information relating to entertainment, provided on-line from a computer database or the internet.

REPUTATION – ARTICLE 8(5) EUTMR

According to the opponent, all of its earlier registered EU and UK marks are reputed for all of the goods and services for which they are registered, in Classes 9, 38 and 42. As regards the EU trade marks, the opponent specifically claims reputation in the UK.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

Reputation of the earlier trade marks

According to the opponent, the earlier EU trade marks have a reputation, especially in the United Kingdom, and the earlier UK trade marks also enjoy reputation in the United Kingdom.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 31/10/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the EU/the UK prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

EUTM No 10 249 688 for the word mark ‘DIFFUSION’

EUTM No 11 168 127 for the figurative mark ‘ Image representing the Mark ’

UK trade mark No 2 612 816 for the word mark ‘DIFFUSION’

UK series trade mark No 2 612 943 for the figurative mark ‘ ’

Class 9: Computer software; databases; publications and software supplied on line from a computer database or via the Internet or other communications networks; computer software to enable monitoring, capturing and dissemination of information over the Internet or other communications networks; computer software to enable monitoring, capturing and dissemination of real-time information over the Internet or other communications networks; computer software for real-time, event-based monitoring, analysis and dissemination of information; computer software for the analysis and dissemination of information over the Internet or other communications networks; computer software for generating alerts over the Internet or other communications networks; computer software for information replay and relay; computer software for information replay and relay over the Internet or other communications networks; parts and fittings for all the aforesaid goods; all of the aforesaid relating to a messaging platform for the real-time delivery of data; none of the aforementioned in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality.

Class 38: Telecommunications; provision of access to computer databases; provision of access to computer databases via the internet or other communications networks; computer aided transmission of data, information, messages and images; data transmission services, data transfer services; data transmission services; telecommunication of information via the Internet and other computer and communications networks; data transfer services; providing of online access to data and information; providing of access to data and information over the Internet; transmission of messages, data and information via the Internet and other computer and communications networks; providing access to non-downloadable software; providing access to non downloadable software to enable monitoring, capturing and dissemination of real-time information via the Internet or other communications networks; providing access to non-downloadable software to enable content providers to track real-time information; providing access to non-downloadable software to enable tracking of real-time information via the internet or other communications networks; information, advisory and consultancy services relating to all the aforesaid services; including such services provided on-line via a computer database or via the Internet or other communications networks.

EUTM No 10 249 712 for the figurative mark ‘ Image representing the Mark ’

Class 9: Computer software; databases; publications and software supplied on line from a computer database or via the Internet or other communications networks; computer software to enable monitoring, capturing and dissemination of information over the Internet or other communications networks; computer software to enable monitoring, capturing and dissemination of real-time information over the Internet or other communications networks; computer software for real-time, event-based monitoring, analysis and dissemination of information; computer software for the analysis and dissemination of information over the Internet or other communications networks; computer software for generating alerts over the Internet or other communications networks; computer software for information replay and relay; computer software for information replay and relay over the Internet or other communications networks; parts and fittings for all the aforesaid goods; all of the aforesaid relating to a messaging platform for the real-time delivery of data; none of the aforementioned in respect of software dedicated to video, image, and especially 3D, virtual objects and augmented reality.

Class 42: Design and development of computer hardware and software; application provider services (ASP); providing access to non-downloadable software; providing access to non downloadable software to enable monitoring, capturing and dissemination of real-time information via the Internet or other communications networks; providing access to non-downloadable software to enable content providers to track real-time information; providing access to non-downloadable software to enable tracking of real-time information via the internet or other communications networks; computer consultancy services; consultancy services in relation to information technology; information, advisory and consultancy services relating to the aforesaid services; including such services provided on-line via a computer database or via the Internet or other communications networks; all of the aforesaid relating to a messaging platform for the real-time delivery of data; none of the aforementioned in respect of software dedicated to video, image and especially 3D, virtual objects and augmented reality.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 18/11/2016, the opponent submitted evidence to support this claim. 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 consists of the following documents:

Witness Statement from Mr Lee Cottle, the opponent’s General Manager and Vice-President Global Head of Sales, explaining that the company was founded in 2006 and offers technological solutions to businesses in the field of data telecommunications and storage. It is further stated that the leading product is the ‘DIFFUSION’ data communication and storage software, which was launched in 2008. The product is described as a communication platform which allows users to easily integrate and distribute data in real time over the internet. It is also indicated that it has acquired a substantial amount of reputation and is now used by many large corporations in various fields such as online gambling, banking and information technology. Mr Cottle argues that the majority of online gambling and gaming providers use ‘DIFFUSION’, in particular the leading ones.

The Witness Statement contains a table which indicates the revenue attributable to ‘DIFFUSION’ in 2012, 2013, 2014 and 2015.

It is accompanied by the following annexes:

LC-1: Company’s datasheet for the ‘DIFFUSION’ software, undated, providing an overview of the product and its main functions. It includes a statement from the IT manager of one customer (a German bank) indicating that ‘selecting the market-leading platform (Diffusion) is a long-term strategy …’; the document also mentions another four customers (referred to as ‘leading-brands’);

LC-2: Promotional document printed on 07/05/2015, and which, according to its caption () seems to be a draft version of a future handout rather than the final document. It provides further information about three of the customers mentioned in the previous document, which are described as ‘one of the world’s most popular online gaming entertainment and solutions providers’, ‘a German Internet Bank and direct broker’ and ‘the leading online betting odds comparison service’. The abovementioned statement from the bank’s IT manager is also included in this document.

LC-3: Web extracts providing information as to how some of Push’s corporate clients in the betting and gaming sectors use the ‘DIFFUSION’ platform. Three are articles published on the opponent’s website: the first one, dated 2011, concerns the gambling company previously mentioned, the second one undated is about the same company and the third one dated 31/03/2015 is an article by Mr Cottle about another of the companies previously mentioned, to which he refers as ‘one of the world’s most popular online gaming and entertainment solution providers’. Another two articles concerning the first company are from www.igamingbusiness.com and www.gamblinginsider.com (they are dated 2011).

LC-4: Two articles published on the opponent’s website referring to its attendance at the ICE gaming industry conference in 2014 and 2015 (in London).

LC-5: Information about the German customer in the banking sector from the website www.bloomberg.com printed on 24/10/2016. It is referred to as an online bank and direct financial broker that provides banking and securities-related services to private individuals in Germany and Austria.

LC-6: Information about the financial services company (extracted from the company’s website) about which Mr Cottle indicates that it has entered into a partnership with the opponent.

LC-7: Articles published on the opponent’s website concerning the contract with the German bank (dated September 2013) and the partnership with the abovementioned financial company (undated). The latter includes the quote ‘Push technology offered a secure, robust, fast and flexible solution as well as being able to support our trading platform and the features within our GUI’.

LC-8: Article published on the opponent’s website, undated, regarding its partnership with a leading company in the IT sector. In the written statement, Mr Cottle indicates that this partnership considerably increased its client-base for the ‘DIFFUSION’ software in Europe.

LC-9: Annual reports of the opponent for the years 2012, 2013 and 2014. They do not refer to the ‘DIFFUSION’ product or trade marks.

LC-10: Four invoices corresponding to charges for licence fees, maintenance and set up agreements in relation to the ‘DIFFUSION’ software. The first one is dated 24/03/2016 and the other three are dated 2011 and 2013. They are addressed to companies in the UK, Dublin and Gibraltar.

LC-11/LC-12: Extracts from the opponent’s website obtained through the Wayback machine showing that information concerning the ‘DIFFUSION’ product has been available since 2008.

LC-13: Graph presented on a blank page. Mr Cottle explains that it is extracted from the website www.hubspot.com and indicates the number of visits on the opponent’s website between July 2008 and July 2016. (more than 200 000 visits).

LC-14: Extracts showing the opponent’s presence and activity on the main social media. Mr Cottle points out that the opponent regularly posts updates. Most extracts do refer to the ‘DIFFUSION’ software. A tweet dated 28/10/2015 emphasises the success of one of the opponent’s customers in the gambling sector (being the number 1 sports app on Apple Store).

LC-15: Same promotional material as in LC-2.

LC-16: Listing which, according to Mr Cottle’s explanations, corresponds to the emails and newsletters sent to customers in relation to the ‘DIFFUSION’ product. The dates are 2014 and 2015. It is indicated that the opponent sends updates to its clients about ‘DIFFUSION’ twice a month on average to more than 6000 recipients. It is noted that the listing contains a column entitled ‘Delivered’ in which the number indicated is usually around 80 except for one which is 6000. It also contains a column entitled ‘Open rate’ in which the number indicated is between 12% and 52%.

LC17: Extracts from the opponent’s website concerning workshops and training sessions for customers. Article also published on the opponent’s website dated 04/12/2015 referring to a series of workshops that same week in London.

LC-18: Articles about the ‘DIFFUSION’ software in several publications of which Mr Cottle says that they are widely recognised in the IT and software development sectors.

www.eweek.com (14/07/2015): the article concerns the software ‘Reaapt’ and refers to ‘Diffusion’ as ‘Push’s technology’s well-known messaging platform deployed by a list of large enterprise and government customers’.
www.idevnews .com: (dated September 2015 according to Mr Cottle). The article is based on an interview with the opponent’s CTO Director mainly reporting on the functionalities of the product.
www.bankingtech.com (05/09/2013): this article is about the purchase of the ‘DIFFUSION’ software by the German bank already referred to in several annexes.
sdtimes.com (20/05/2014): it is about the release 5.0 of the ‘DIFFUSION’ product and its new functionalities.
www.programmableweb.com (May 2014): it is similar to the previous article.
www.networkworld.com (08/09/2015): very brief article entitled ‘New products of the week 09.08.2015’ which refers to ‘Diffusion 5.5’ (the latest version of Push Technology’s enterprise-grade, internet messaging solution).

LC19: Article published on the opponent’s website showing that it was named as a ‘Cool Vendor’ in the ‘2013 Application and Integration Report issued by Gartner Inc’. According to the article, a ‘cool vendor’ is a ‘company that offers technologies or solutions that are: innovative, enabling users to do things they could not do before; impactful, have or will have business impact; intriguing, have caught Gartner’s interest or curiosity in approximately the past six months’.

Having examined the material listed above, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

The opponent must submit evidence enabling the Office to reach a positive finding that the earlier mark has acquired a reputation in the relevant territory. It follows that the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public. The reputation of the earlier mark must be established to the satisfaction of the Office and not merely assumed.

Reputation is a knowledge threshold requirement, implying that it must be principally assessed on the basis of quantitative criteria. In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 22-23; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 34)

Therefore, among the factors to be taken into account for assessing reputation, the degree of recognition of the mark amongst the relevant public is directly relevant as well as the market share enjoyed by the goods and services offered or sold under the mark and the position it occupies in the market as they both serve to indicate the percentage of the relevant public that actually buys the goods and to measure the success of the mark against competing goods. Therefore, a very substantial market share, or a leader position in the market, will usually be a strong indication of reputation.

According to the written statement, the ‘DIFFUSION’ product has acquired a substantial amount of reputation and is now used by many large corporations in various fields such as online gambling, banking and information technology.

As regards the above document, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary since such statements have to be considered as having less probative value than evidence originating from independent sources.

In the present case, the Opposition Division finds that the statement that the earlier marks have a substantial reputation is not supported by the remaining evidence.

The evidence mainly consists of information from the opponent’s own website which is not of such a nature as to indicate or even suggest a high degree of exposure of the earlier trade marks and, accordingly, awareness on the part of the relevant public.

In particular, the evidence does not provide any indication as to the market share of the opponent’s earlier trade marks or about the degree of recognition which they enjoy on the relevant market.

The revenue figures indicated in the written statement are not sufficiently corroborated by objective evidence and are not anyway particularly revealing since they are not put into the context of the market and competitors in question.

The annual reports do not specifically mention the ‘DIFFUSION’ trade marks and merely indicate that the opponent’s company has been active in the period concerned.

Neither has the opponent provided any documents revealing particularly intensive promotional activities which may suggest wide exposure and enhanced recognition.

Indeed the evidence relating to promotional activities consists essentially of articles on the opponent’s own website, one handout whose distribution is not indicated and a listing of emailings allegedly sent twice a month to some 6000 companies. Furthermore, the figures concerning the number of visitors on the opponent’s website are not specific enough and their origin is not sufficiently corroborated on the document itself. Lastly the fact that the opponent’s company and the trade mark ‘DIFFUSION’ are mentioned on the main social networks is just a normal situation on the market for any business, which does not reflect a leading position or enhanced visibility on the market.

According to the Opposition Division, the nature of the goods at issue namely a data storage and transmission software does not denote a particularly narrow market and rather indicates that the relevant public for the product in question consists of all companies, in many different sectors, whose activities require the transmission and storage and volume of data. Mr Cottle indicates in the written statement that ‘a significant number of businesses increasingly use technology and telecommunications tools to provide the best offerings for their customers…. Many entities must therefore deal with and instantly communicate with a vast amount of data’. Nevertheless, the documents submitted refer to a limited number of customers, namely some in the gambling/gaming sector, one bank and two partner companies in the IT field, as well as the four customers mentioned in the invoices. Furthermore, it is noted that the fact that the ‘DIFFUSION’ product seems to be rather successful with the specific sector of gaming/gambling is not especially relevant either since, as previously mentioned, the relevant public is much broader than this particular sector. Finally, the quotations showing that the customers in question are satisfied with their buying experience are not to be given much importance to the extent that they reflect only very few individual opinions whereas the assessment is aimed at determining whether the earlier trade marks enjoy wide recognition not the fact that they fulfil the expectations of some customers.

Of some more relevance are the few articles in the online specialised press in Annex LC-18. Nevertheless, the number of such articles is very limited and their content is not indicative of obvious reputation. The articles mainly refer to the release of new versions of the opponent’s ‘DIFFUSION’ product and no information has been provided regarding those websites which may allow the Opposition Division to figure out their impact on the relevant public. In any case, it is rather usual for such specialised websites to report on all novelties in the IT field and the articles in question do not contain solid indication that the ‘DIFFUSION’ product or trade marks are reputed on the relevant market. In particular, the fact that the ‘DIFFUSION’ software is referred to as a ‘well-known’ platform is not decisive since the expression is not clarified any further and cannot be considered to be tantamount to ‘reputed’ within the meaning of Article 8(5) EUTMR. Finally, the scope and repercussions of the ‘cool vendor’ award obtained by the ‘DIFFUSION’ product in 2013 cannot be determined on the basis of the sole document provided in this respect.

Indeed, the evidence submitted shows use of the earlier trade marks but does not allow the Opposition Division to draw the conclusion that they enjoy the high degree of recognition which could afford them the extended protection granted by Article 8(5) EUTMR.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation in any country of the European Union, even the United Kingdom, and therefore failed to establish reputation in the European Union as a whole.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any convincing facts, arguments or evidence that could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

In its observations related to Article 8(5) EUTMR, the opponent mentions unfair advantage and detriment to the earlier marks’ repute or distinctive character. However, this is done in the abstract and very broadly.

Unfair advantage is the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40). As regards unfair advantage, the opponent does not refer to the specific relevant goods at issue or to any specific image and qualities of its own goods which the public could project onto the contested services marketed under the contested sign. It limits itself to defining the concept and to cite case-law establishing that unfair advantage is more probable where there is a strong association between the signs.

Likewise, as regards the detriment to the earlier marks’ repute or distinctive character, the opponent remains very unspecific since it just asserts that it will not be able to control the manner in which the application uses it signs, which may be adverse to the image created by the opponent, without defining such image.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. In the present case, the opponent failed to submit evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

Since the opposition fails under Article 8(5) EUTMR, the assessment continues on the basis of Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The opponent invokes Article 8(4) EUTMR on the basis of the non-registered trade mark for the word ‘DIFFUSION’ used in the course of trade in the United Kingdom for the following goods and services in Classes 9, 38 and 42:

The right under the applicable law

The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off as applied in the United Kingdom. It provides voluminous evidence namely legal literature and ample case-law which duly establishes the existence of the common law in question and contains all the information necessary for its sound application.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods and services originate from the opponent. In other words, the public would be likely to believe that goods and services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

Misrepresentation

The public is unlikely to be misled where the contested goods and services are dissimilar to those upon which the opponent’s goodwill has been built.

The remaining contested services in Class 41 (in the field of organisation of conferences, entertainment including online entertainment, sports and writing for others) have already been compared to all of the opponent’s goods and services under the grounds of Article 8(1)(b) EUTMR and have been found dissimilar.

Additionally, these contested services are not only dissimilar, but are sufficiently different to the only goods and services mentioned in the submitted evidence hence the only goods and services in relation to which goodwill is likely to be proven, namely data storage and communication software and services of provision of such software. For instance, the expertise and skills involved in offering the opponent’s goods and services and the applicant’s services relate to completely different competences and the consumer is unlikely to associate them or to conceive of them as coming from similar undertakings. In these circumstances, and in the absence of sound arguments and evidence to the contrary, the Opposition Division concludes that the use of the contested sign on the remaining contested services will not constitute or result in any misrepresentation that might lead consumers into believing that the services offered by the applicant are the goods or services of the opponent or that the contested sign trades off the goodwill of the earlier mark in any other way. As a consequence, the Opposition Division finds that the opposition is not well founded under Article 8(4) EUTMR insofar as based on the law of passing-off in relation to the above mentioned contested services.

Additionally, the Opposition Division notes that the opponent did not put forward any specific argument or evidence concerning the damage that the use of the contested trade mark may cause to the goodwill attached to the earlier trade mark (it just refers to inevitable and considerable loss or damage).

FINAL REMARKS

In defence of its trade mark application, the applicant puts forward several arguments that will briefly be discussed here. The applicant insists on its honest intentions and on the fact that it tried to reach an agreement with the opponent. It explains that ‘ORBI Diffusion’ is the name of its company and will not be used in relation to goods and services but only in contracts and in the heading of invoices hence very few people will get to encounter it. It also indicates that its own market is mainly in France and that its activities are mainly intended for the general public whereas the opponent’s goods and services target professionals and according to its investigations, are only used in the UK or the English-speaking market. It stresses that it chose to incorporate the term ‘Diffusion’ next to the term ‘ORBI’ just to clarify the type of services provided under the mark ‘ORBI’ (bearing in mind that ‘DIFFUSION’ means ‘broadcasting, transmitting’ in French). Finally, it questions the opponent’s good faith.

The intentions of the parties are irrelevant under all of the grounds invoked hence the applicant’s good faith or the opponent’s alleged bad faith of the parties has no bearing on the case. Neither is the way in which the applicant intends to use its trade mark or the reasons why it chose to include the word ‘DIFFUSION’ next to the word ‘ORBI’. Furthermore, as regards the alleged differences in the respective markets and intended publics, it is noted that the comparison of the services should be focussed on the actual wording of the respective specifications, which in this case do not reflect those differences. Therefore, none of the above arguments is founded.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Boyana NAYDENOVA

Catherine MEDINA

Frédérique SULPICE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.

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