CANCELLATION No 13064 C (INVALIDITY)

 

Information Builders, Inc., 2 Penn Plaza, New York, New York 10121-2898, United States of America (applicant), represented by Wilson Gunn, 5th Floor, Blackfriars House, The Parsonage, Manchester M3 2JA, United Kingdom (professional representative)

 

a g a i n s t

 

LogicNow Ltd, Suites 10 & 11, The Vision Building, Dundee DD1 4QB, United Kingdom (EUTM proprietor) represented by Jennifer Zador LogicNow Ltd and Charlotte Fleming GFI Software Develoment LTd,  Suites 10 & 11, The Vision Building, 20 Greenmarket, Dundee DD1 4QB, United Kingdom (employee representatives).

 

 

On 10/02/2017, the Cancellation Division takes the following

 

 

DECISION

 

 

1.        The application for a declaration of invalidity is upheld.

 

2.        European Union trade mark No 13 417 472 is declared invalid in its entirety.

 

3.        The EUTM proprietor bears the costs, fixed at EUR 1 080.

 

 

 

REASONS

 

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 13 417 472. The application is based on, inter alia, European Union trade mark registration No 3 448 362. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

 

 

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The applicant argues that that the EUTM should be declared invalid since it covers goods and services in Classes  9 and 42 that are either identical or highly similar to the applicant’s goods and services and the marks are highly similar. The applicant further claims that the earlier trade mark ‘FOCUS’ is fully contained in the contested mark as the consumers will mentally separate the contested mark into ‘MAX’ and ‘FOCUS’.

 

The EUTM proprietor did not submit observations in reply.

 

 

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s European Union trade mark registration No  3 448 362.

 

 

1. The goods and services

 

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

 

Class 9:         Computers; computer hardware, parts thereof and fittings therefor; computer software; computer software for database management; computer software for use in decision support systems; computer software for use in enterprise reporting and analysis systems and for building applications for the management and tracking of data for enterprise reporting systems; computer database programs for use in connection with decision support, analysis, and reporting programs; computer software development tools for use in developing decision support, analysis, and reporting systems and applications; computer software, namely, client/server reporting, analysis and decision support tools; computerized database, reporting, and analysis software for use on corporate intranet web sites; enterprise server software for use in web based data publishing, reporting, and analysis solutions; computer software for accessing databases by means of global computer networks to generate reports; software development tools for making reporting and analysis available through global computer network worldwide websites and for extending the functionality of enterprise reporting and analysis systems on to global computer networks; and computer software for accessing and updating databases through global computer networks.

 

Class 42:        Computer programming services, and consulting services in the field of computer programming.

 

 

The contested goods and services are the following:

 

Class 9:        Software; Network management software; Computer software for controlling and managing access server applications; Computer software; Software for ensuring the security of electronic mail; Computer software downloaded from the internet; Computer software for use in computer access control.

 

Class 42:        Monitoring of computer systems by remote access; Computer software consultation; Computer software technical support services; Providing back-up computer programs and facilities; Software as a service [SaaS]; Monitoring of network systems; Computer system monitoring services; Consultancy services relating to computer networks; Information technology support services; Installation and customisation of computer applications software; Anti-spamming services; Computer virus protection services; Cloud computing; Software development; Computer software development; Computer software design and development; Updating and upgrading of computer software; Research, development, design and upgrading of computer software; Updating of computer software relating to computer security and prevention of computer risks.

 

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

 

Contested goods in Class 9

 

The contested goods consist of software or particular types of software (network management software; Computer software for controlling and managing access server applications; Computer software; Software for ensuring the security of electronic mail; Computer software downloaded from the internet; Computer software for use in computer access control).

 

Computer software is identically contained in both lists.

 

Software is identical to the applicant’s goods computer software as they are synonyms.

 

Finally, network management software; Computer software for controlling and managing access server applications; Software for ensuring the security of electronic mail; Computer software downloaded from the internet; Computer software for use in computer access control are included in the broad category of the applicant’s computer software. Therefore, they are identical.

 

 

Contested services in Class 42

 

The applicant’s goods and services relate to computer software or services related to the development of or advice on computer programming. Computer programming is one of the phases of software development.

 

The contested computer software consultation overlaps with the applicant’s consulting services in the field of computer programming. Therefore, they are identical.

 

The contested customisation of computer applications software; Software development; Computer software development; Computer software design and development;  Research, development, design of computer software are all related to the design or development of software services. The contested services overlap with the applicant’s computer programming services. Therefore, they are identical.

 

The contested providing back-up computer programs and facilities; Installation of computer applications software; Updating and upgrading of computer software; Upgrading of computer software; Updating of computer software relating to computer security and prevention of computer risks are all services related to software or computer maintenance. These services may target the same consumers, use the same distribution channels and have the same service providers as the applicant’s computer programming services. Therefore, they are similar.

 

The contested services monitoring of computer systems by remote access; Monitoring of network systems; Computer system monitoring services consist of services aimed at monitoring systems which interconnect computers and/or other peripheral devices such as printers. These services may target the same consumers, use the same distribution channels and have the same service providers as the applicant’s computer programming services. Therefore, they are similar.

 

The contested computer software technical support services and information technology support services consist of services aimed at providing technical assistance to clients in connection with, among others, software products. These services may target the same consumers, use the same distribution channels and have the same commercial origin as the applicant’s computer software. Moreover, the goods and services may be complementary. Therefore, they are similar.

 

The contested consultancy services relating to computer networks may target the same consumers, use the same distribution channels and have the same commercial origin than the applicant’s consulting services in the field of computer programming. Therefore, they are similar.

 

The contested software as a service [SaaS] is a software distribution model in which a third-party provider hosts applications and makes them available to customers over the internet.  The contested anti-spamming services are solutions which focus on blocking and mitigating the effects of illegal emails – or spam – on email users. Similarly, the contested computer virus protection services offer solutions which focus on preventing, detecting and removing malicious software. Solutions in both cases include anti-spam or anti-virus software. These services may target the same consumers, use the same distribution channels and have the same commercial origin as the applicant’s computer software. Moreover, the goods and services may be complementary. Therefore, they are similar.

 

Finally, the contested cloud computing consists in providing users and enterprises with various capabilities to store and process their data in third-party data centres through a model for enabling ubiquitous, on-demand access to a shared pool of configurable computing resources (e.g. processors, data, networks, servers, storage, software, applications and services), which can be rapidly provisioned and released with minimal management effort. These services may target the same consumers, use the same distribution channels and have the same commercial origin as the applicant’s computer programming services. Therefore, they are similar.

 

 

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.

 

The goods and services at issue are specialised goods and services mainly directed at business customers with specific professional knowledge or expertise (technicians, engineers, researchers and IT experts focused on, for instance, the development and design of computer programs). It cannot be excluded however that certain goods (software) also target the public at large. The degree of attention paid to the goods and services concerned may vary from average to high, depending on the nature and type of the goods and services concerned and due to the high levels of technicality, specificity or price of some of the goods and services and the infrequency with which they will be purchased.

 

3. The signs

 

 

 

FOCUS
Earlier trade mark	Contested trade mark

 

 

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any 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, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

 

The earlier mark consists of the word mark ‘FOCUS’.

 

The contested mark is a figurative mark. Although the sign consists of one single word, the Cancellation Division agrees with the applicant that two elements can clearly be identified within the sign, given their different stylisation: ‘MAX’ and ‘FOCUS’. The element ‘MAX’ is written in blue standard capital letters with a wavy white line running from the right part of the letter ‘M’, crossing the central part of the letter ‘A’, and ending in the left part of the letter ‘X’. The element ‘FOCUS’ is written in standard lower-case black letters.

 

Both marks coincide in the element ‘FOCUS’ which means, among others, ‘a focal point, point upon which attention, activity etc.; is directed or concentrated; concentrate’ for the English speaking part of the public. Since they do not have any relation with the relevant goods and services, this element has an average degree of distinctive character.

 

The earlier mark, being a single word mark, has no elements which could be considered clearly more distinctive than other elements.

 

The element ‘MAX’ of the contested mark may be perceived as the abbreviation of ‘maximum’. Bearing in mind the relevant goods and services, this term will be considered laudatory. It may be perceived, for instance, as referring to the (best) quality of the goods and services or to an ‘upgraded’/’improved’ version of the goods and services. Therefore, this element is weak for these goods and services.

 

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

 

Visually, the signs coincide in the element ‘FOCUS’ present in both signs. However, they differ in the slightly stylized element ‘MAX’ in blue of contested EUTM. Considering that the signs differ in a weak element, the signs are considered to be visually similar to a high degree.

 

Aurally, the pronunciation of the signs coincides in the syllables ‘FO-CUS’, present identically in both signs. The pronunciation differs in the syllable ‘MAX’ of the contested mark, which has no counterpart in the earlier mark. Considering that the marks differ in a weak element, the signs are considered to be aurally similar to a high degree.

 

Conceptually, as explained above, the English-speaking public in the relevant territory may attribute, among others, the following meaning to the element ‘FOCUS’ present in both signs: ‘a focal point, point upon which attention, activity etc.; is directed or concentrated; concentrate’. As above-stated, the element ‘MAX’ in the contested sign will be perceived as an abbreviation of ‘maximum’ therefore the contested mark, as a whole, will be understood as ‘maximum focus’. As the signs will be associated with a similar meaning due to the identical meaning of their most distinctive element, the signs are conceptually highly similar.

 

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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

 

Consequently, assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services 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

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

 

All of the contested goods and services have been found identical or similar to the applicant’s goods and services. Moreover, the earlier trade mark ‘FOCUS’ is fully included in the contested trade mark, where it plays an independent distinctive role. The differences in the signs, in particular the slightly stylised element ‘MAX’ in the contested trade mark, cannot counterbalance the similarities in view of its laudatory nature.

 

In light of the high degree of similarity of the signs and the identity/similarity of the goods and services at issue, the Cancellation Division finds that there is a likelihood of confusion even on the part of the public with a high degree of attention. It should be noted in this regard that 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, it cannot be excluded that the relevant public considers that the goods and services covered by the contested trade mark are a new (for instance, improved) line of goods and services of the applicant.

 

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 declare the contested trade mark invalid.

 

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 3 448 362. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

 

As the earlier European Union trade mark registration No 3 448 362 leads to the success of the application and the cancellation of the contested trade mark for all the goods and services against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

 

COSTS

 

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Rule  94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

 

 

The Cancellation Division

 

 

Ana  MUÑIZ RODRÍGUEZ

Elisa ZAERA CUADRADO

Carmen SÁNCHEZ PALOMARES

 

 

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

 

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.