OPPOSITION No B 2 599 390

Phoenix Contact GmbH & Co. KG, Flachsmarktstr. 8, 32825 Blomberg, Germany (opponent), represented by Bruno Muth, Flachsmarktstr. 8, 32825 Blomberg, Germany (employee representative)

a g a i n s t

Yummi Media Group Limited, 22 Ganton Street, London W1F 7BY, the United Kingdom (applicant), represented by Sheridans, Seventy Six Wardour Street, London W1F 0UR, the United Kingdom (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 599 390 is partially upheld, namely for the following contested goods and services:

Class 9:        Downloadable audio-visual media content in the field of entertainment featuring live action motion pictures, television series, comedies and dramas; downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas; computer software, namely, computer software for streaming audio-visual media content via the internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with multimedia and interactive functions, video search and annotation software, content protection software, database management software, database synchronization software; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment related audio, video, text and multi-media content; computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the internet; computer game software; computer programmes for interactive television and/or cinema and for interactive games and/or quizzes; downloadable computer software for streaming audio-visual media content via the internet; downloadable computer software for streaming and storing audio-visual media content; downloadable publications in the nature of books and magazines in the field of entertainment; application software; computer application software tor mobile phones.

Class 35:        Retail services connected with digital media, namely, electronic publications, magazines, journals, guides and other texts in recorded data form, e-books, recordings, recorded data, computer software, application software, computer application software for mobile phones; compiling of information into computer databases.

Class 38:        Telecommunication services; delivery of information by electronic media; providing access connections and links to the internet, computer networks, databases, websites and to online products and services; electronic transmission of computer software and applications via the internet and other computer and electronic communication networks and wireless devices; providing online facilities for real-time interaction with other computer users concerning topics of general interest [chat rooms]; providing online chat rooms and electronic bulletin boards for transmission of messages among users regarding movies, movie show times, movie trailers, movie rating and reviews, movie roles, movie plots, movie industry news, and regarding computer and video games, and for the transmission of movie ratings and reviews among users; electronic transmission and streaming of digital media content for others via global and local computer networks and via mobile telephones, smartphones and other mobile communications devices; streaming of audio and video material on the internet and via mobile telephones, smartphones and other mobile communications devices; enabling users of mobile telephones, smartphones and other mobile communications devices to communicate with each other regarding movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news, personalities, events, projects, planned or potential projects and events, and regarding computer and video games; telecommunications.

Class 41:        Publication of online journals, namely, blogs featuring information regarding movies, movie show times, movie trailers, movie ratings and reviews, and movie industry news; providing information relating to education, provided online from a computer database or the internet, and via mobile telephones, smartphones and other mobile communications devices; providing an interactive database, for entertainment purposes, featuring information about movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news, personalities, events, projects, planned or potential projects and events online and via mobile telephones, smartphones and other mobile communications devices; providing computer and video games online and via mobile telephones, smartphones and other mobile communications devices; providing information regarding computer games and computer enhancements for games online and via mobile telephones, smartphones and other mobile communications devices; education; providing of training.

Class 42:        Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the field of movies; application service provider, namely, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news, personalities, projects, planned or potential projects and events, and for enabling users to create personal databases of movie related information, reviews, video clips, actor profiles and fan clubs, actor photos, movie industry news, celebrity gossip, and games and quizzes; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 45:        Online social networking services; providing a website on the internet for the purpose of social networking; internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials; social networking services provided online and via mobile telephones, smartphones and other mobile communications devices.

2.        European Union trade mark application No 13 972 922 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 972 922 ‘PHONIX’ (word). The opposition is based on, inter alia, international trade mark registration No 1 125 907 ‘PHOENIX CONTACT’ (word), designating the European Union. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

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 international trade mark registration No 1 125 907, designating the European Union.

1. The goods and services

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

Class 3: Cleaners for printers and pens.

Class 6: Steel alloys; metal bolts; metal screws; nuts; latches; plates of metal; molds of metal, especially for injection molding of plastic parts.

Class 7: Automatic machine tools, especially cutting and stripping machines; printing machines; metalworking machines; labeling or marking machines; electric screwdrivers.

Class 8: Hand tools, tools (included in this class), in particular stripping tools, wire and profile cutters.

Class 9: Mounting devices of metal, especially mounting rails, covers and masts, especially for industrial automation, control and feedback control systems; keys for switchboards or cabinets, electrical and electronic appliances, devices and instruments (included in this class), especially in the field of industrial automation, control and feedback control systems, in particular programmable automation devices, chargers for electric secondary batteries, programmable logic controllers, converters, surge protection devices for power supplies and signal interfaces, suppression devices, in particular power line filters, test equipment for surge protection devices and equipment, modems, transmitters for electronic signals, transmitters (telecommunication), electrical coils, electric display devices, frequency meters, interface devices, current rectifiers, current strength meters or galvanometers, circuit breakers, current transformers, temperature indicators, totalizers (adders), monitoring devices (electric), voltmeters, transformers (electric meters), programmable logic control systems, visualizing systems, display devices, especially text displays, operator control units, especially touchscreen operator control units, bus systems, firmware, computers, especially industrial computers, monitors, electrical equipment for the operation, remote control and monitoring of industrial processes, in particular for HMI (human machine interface) applications; electrical and/or electronic current and/or power supply units (included in this class), including uninterruptible power supplies; electrical signaling, measuring, counting, recording, monitoring, control, regulation and switching devices; electronic components and devices for signal transformation, conversion, and transmission; electrical and electronic components, especially conductors, terminals and contacts, terminal strips, resistors, coils, transformers, converters, circuit breakers, distribution boards, transmitters and receivers, sensors, switches and relays, link and connecting elements of metal and/or plastics for electrical and electronic applications; connectors and fastening brackets for the aforementioned electrical and electronic components, electrical circuit boards; computer programs; data networks (local or global) and networking components, especially in the field of industrial automation, control and feedback control systems; housings for industrial use, especially for the reception and accommodation of electrical equipment and electrical systems and devices, including distribution boxes and junction boxes or sockets; electrical testing and labeling or marking equipment, especially in the field of industrial automation, control and feedback control systems; electronic publications (downloadable); solar collectors and solar panels for power generation; material for electrical lines (wires, cables); computer software (recorded), especially software for programming, planning, parameterization, configuration and visualization of components, equipment sections and equipment data; memories for data processing equipment; thermostats; batteries, especially lead-acid batteries and gel lead-acid batteries; secondary batteries (electric), in particular lithium-ion secondary batteries, chargers for electric secondary batteries; plugs (electric), in particular for solar technology; computer printers, in particular, label printers; solar stations.

Class 16: Printed matter for advertising and presentation purposes; printed envelopes and packaging material, especially paperboard and cardboard (included in this class); print materials, especially marking material; labeling pencils (stationery) for manual labeling; inks; typewriters; color and ink ribbons.

 

Class 17: Insulation material, especially for cables, including heat-shrink tubing.

 

Class 37: Installation, maintenance and repair of electrical and electronic apparatuses, devices and instruments, including assembly services relating to terminal strips. 

Class 38: Providing access to information provided in a computer network, especially in the form of an online search assistants, providing access to databases.

Class 41: Technical training, in the areas of security technology, radio technology, explosion protection, bus systems, programming and application of electro-technical and electronic apparatuses, appliances and goods (included in class 9), especially in the field of industrial automation, control and feedback control systems. 

Class 42: Technical project planning and consultancy therefor, especially with regard to plant design, plant programming, plant parametrisation and plant implementing; installation, maintenance and repair of software, especially in the field of industrial automation, control and feedback control systems; design and preparation of programs for data processing, especially for programmable logic controllers; design and development of computer hardware and software, research services, especially in the fields of engineering, communications engineering, control engineering and software engineering; technical analysis relating to equipments for use in security and/or process engineering.

The contested goods and services are the following:

Class 9: Downloadable audio-visual media content in the field of entertainment featuring live action motion pictures, television series, comedies and dramas; downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas; computer software, namely, computer software for streaming audio-visual media content via the internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with multimedia and interactive functions, video search and annotation software, content protection software, database management software, database synchronization software; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment related audio, video, text and multi-media content; computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the internet; computer game software; computer programmes for interactive television and/or cinema and for interactive games and/or quizzes; downloadable computer software for streaming audio-visual media content via the internet; downloadable computer software for streaming and storing audio-visual media content; downloadable publications in the nature of books and magazines in the field of entertainment; application software; computer application software tor mobile phones.

Class 35: Retail services connected with the sale of downloadable live action motion pictures, television series, comedies, dramas, animated motion pictures, downloadable sound, music, image, video and game tiles, downloadable animated motion pictures, television series, comedies, and dramas, downloadable sound, music, image, video and game files; retail services connected with downloadable live action motion pictures, television series, comedies, dramas, animated motion pictures, downloadable sound, music, image, video and game files provided via the internet and other computer and electronic communication networks; Retail services connected with digital media, namely, pre-recorded digital sound, video and data recordings featuring music, text, video, games, comedy, drama, action, adventure or animation, electronic publications, magazines, journals, guides and other texts in recorded data form, e-books, recordings, recorded data, pre-recorded discs, tapes and cassettes, DVDs, CDs, CD-ROMs, computer software, application software, computer application software for mobile phones; compiling of information into computer databases; marketing, advertising and promotion services; market research and consumer market information services; advertising services, namely, promoting the goods and services of others via computer and communication networks; providing online marketplaces for sellers of goods and/or services; promoting the goods and services of others over the internet; online advertising and marketing services; providing and rental of advertising space on the internet; providing online auction services; comparison shopping services, namely providing commercial information and advice for consumers and providing price comparison services.

Class 38: Telecommunication services; delivery of information by electronic media; providing access connections and links to the internet, computer networks, databases, websites and to online products and services; electronic transmission of computer software and applications via the internet and other computer and electronic communication networks and wireless devices; providing online facilities for real-time interaction with other computer users concerning topics of general interest [chat rooms]; providing online chat rooms and electronic bulletin boards for transmission of messages among users regarding movies, movie show times, movie trailers, movie rating and reviews, movie roles, movie plots, movie industry news, and regarding computer and video games, and for the transmission of movie ratings and reviews among users; electronic transmission and streaming of digital media content for others via global and local computer networks and via mobile telephones, smartphones and other mobile communications devices; streaming of audio and video material on the internet and via mobile telephones, smartphones and other mobile communications devices; enabling users of mobile telephones, smartphones and other mobile communications devices to communicate with each other regarding movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news, personalities, events, projects, planned or potential projects and events, and regarding computer and video games; telecommunications.

Class 41: Entertainment services, namely, providing information regarding movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news and information regarding celebrities, events, projects, and planned or potential events and projects via a website on the internet and via mobile telephones, smartphones and other mobile communications devices; interactive entertainment services, namely, providing information regarding movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news and information regarding celebrities, events, projects, and planned or potential events and projects via a website on the internet and via mobile telephones, smartphones and other mobile communications devices; publication of online journals, namely, blogs featuring information regarding movies, movie show times, movie trailers, movie ratings and reviews, and movie industry news; providing information relating to entertainment and education, provided online from a computer database or the internet, and via mobile telephones, smartphones and other mobile communications devices; providing an interactive database, for entertainment purposes, featuring information about movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news, personalities, events, projects, planned or potential projects and events online and via mobile telephones, smartphones and other mobile communications devices; production and distribution of television shows and movies; providing facilities for movies, shows, plays, music of educational training; providing computer and video games online and via mobile telephones, smartphones and other mobile communications devices; providing information regarding computer games and computer enhancements for games online and via mobile telephones, smartphones and other mobile communications devices; education; providing of training; entertainment; sporting and cultural activities.

Class 42: Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the field of movies; application service provider, namely, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news, personalities, projects, planned or potential projects and events, and for enabling users to create personal databases of movie related information, reviews, video clips, actor profiles and fan clubs, actor photos, movie industry news, celebrity gossip, and games and quizzes; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 45: Online social networking services; providing a website on the internet for the purpose of social networking; internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials; social networking services provided online and via mobile telephones, smartphones and other mobile communications devices.

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 terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Further, as a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification. Accordingly, the fact that specific goods and/or services are classified under different classes of the Nice Classification does not automatically mean that such goods and/or services should be considered dissimilar. On the contrary, analysis on the bases of the criteria, mentioned immediately below should be performed.

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

Contested goods in Class 9

The contested computer software, namely, computer software for streaming audio-visual media content via the internet, computer software for streaming and storing audio-visual media content, downloadable audio and video players for media content with multimedia and interactive functions, video search and annotation software, content protection software, database management software, database synchronization software; computer programs for accessing, browsing and searching online databases, software that enables users to play and program entertainment related audio, video, text and multi-media content;  computer application software for streaming and storing audio-visual media content; computer application software for streaming audio-visual media content via the internet; computer game software; computer programmes for interactive television and/or cinema and for interactive games and/or quizzes; downloadable computer software for streaming audio-visual media content via the internet; downloadable computer software for streaming and storing audio-visual media content; application software; computer application software tor mobile phones are different types of computer programs. Accordingly, they are contained in the broad category computer programs of the earlier mark. Hence these goods are identical.

Downloadable publications in the nature of books and magazines in the field of entertainment of the contested sign are included in the broad category electronic publications (downloadable) of the earlier mark. These goods are therefore identical.

Downloadable audio-visual media content in the field of entertainment featuring live action motion pictures, television series, comedies and dramas and downloadable audio-visual media content in the field of entertainment featuring animated motion pictures, television series, comedies, and dramas are various types of media content. They are similar to electronic publications (downloadable) of the earlier mark as they have the same purpose and nature. They can further coincide in producer, end user and distribution channels.

Contested services of Class 35

It is established case law that retail services concerning the sale of particular goods are similar to some extent to these particular goods (05/05/2015, T-715/13, ECLI:EU:T:2015:256, ‘Castello’, § 33). Although the nature, purpose and method of use of the goods and services are not the same, they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The contested retail services connected with digital media, namely, electronic publications, magazines, journals, guides and other texts in recorded data form, e-books, recordings, recorded data, computer software, application software, computer application software for mobile phones are retail services regarding various types of computer programs and electronic publications (downloadable). It is to be noted that since recordings and recorded data, as used in the list of the services of the applicant are a general category, which may include among others different electronic publications, these goods are considered identical to electronic publications (downloadable). Accordingly, these retail services are considered similar to a low degree to the opponent’s computer programs and electronic publications (downloadable) in Class 9.

The contested compiling of information into computer databases is considered similar to the opponent’s providing access to information provided in a computer network, especially in the form of an online search assistants, providing access to databases of Class 38, since these services are complementary. They often share the same service provider, relevant public and distribution channels.

The remaining services of Class 35 of the contested sign, namely retail services connected with the sale of downloadable live action motion pictures, television series, comedies, dramas, animated motion pictures, downloadable sound, music, image, video and game tiles, downloadable animated motion pictures, television series, comedies, and dramas, downloadable sound, music, image, video and game files; retail services connected with downloadable live action motion pictures, television series, comedies, dramas, animated motion pictures, downloadable sound, music, image, video and game files provided via the internet and other computer and electronic communication networks; retail services connected with digital media, namely, pre-recorded digital sound, video and data recordings featuring music, text, video, games, comedy, drama, action, adventure or animation, pre-recorded discs, tapes and cassettes, DVDs, CDs, CD-ROMs; marketing, advertising and promotion services; market research and consumer market information services; advertising services, namely, promoting the goods and services of others via computer and communication networks; providing online marketplaces for sellers of goods and/or services promoting the goods and services of others over the internet; online advertising and marketing services; providing and rental of advertising space on the internet; providing online auction services; comparison shopping services, namely providing commercial information and advice for consumers and providing price comparison services are dissimilar to the goods and services of the opponent.

The opponent claims that these services are highly similar to the goods of Class 9 and the services of Class 38 of the earlier mark with the argument that the above services of Class 35 are provided just like its services of Class 38, via the internet, databases and networks and that a computer program for the provision of the services is needed, which on its turn justifies the claimed similarity to its goods of Class 9. It is to be noted that the fact that certain services are provided by using specific goods as a medium or use the same medium together with other services (e.g. internet or software) is not sufficient to lead to similarity of the respective goods and/or services. This would unreasonably broaden the scope of protection granted. For example this may lead to a conclusion for similarity between computer software and almost any type of service, to the extent such service is or can be provided online and therefore – uses software. The services in question comprise of retail services, advertising and marketing services and services related to them. The nature and purpose of these services are fundamentally different from those of software and the services in Class 38 of the opponent. They are neither complementary nor in competition. They satisfy different needs, have distinct distribution channels and originate from different undertakings. Therefore the Opposition Division does not concur with the opponent’s statement on similarity between the referenced goods and those of the earlier sign.

Contested services of Class 38

The services providing access connections and links to the internet, computer networks, databases, websites and to online products and services of the contested mark are highly similar to providing access to information provided in a computer network, especially in the form of an online search assistants, providing access to databases of the earlier mark, since the services have the same nature, may share the same purpose, often coincide in service provider, have the same relevant public and the same distribution channels.

Telecommunication services and telecommunications of the contested sign are similar to computer programs in Class 9 of the earlier mark. Telecommunication services are those that allow people to communicate with one another by remote means. The role of the internet in the transfer of telecoms data is undisputed. Equipment used for the purposes of telecommunication, like modems, mobile phones, landline telephones, answering machines, fax machines, pagers, routers, etc. is also considered to cover the telecommunications control software that must be in place to successfully support telecommunications activities. Any software that provides the ability to perform telecommunication activities operations can be considered telecommunications control software. Clearly, a link exists between computer programs in Class 9 and telecommunication services in Class 38. These goods and services are similar given their complementary character; although their nature is different, their purpose and distribution channels are also the same (12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26).

Further, delivery of information by electronic media; electronic transmission of computer software and applications via the internet and other computer and electronic communication networks and wireless devices; providing online facilities for real-time interaction with other computer users concerning topics of general interest [chat rooms]; providing online chat rooms and electronic bulletin boards for transmission of messages among users regarding movies, movie show times, movie trailers, movie rating and reviews, movie roles, movie plots, movie industry news, and regarding computer and video games, and for the transmission of movie ratings and reviews among users; electronic transmission and streaming of digital media content for others via global and local computer networks and via mobile telephones, smartphones and other mobile communications devices; streaming of audio and video material on the internet and via mobile telephones, smartphones and other mobile communications devices; enabling users of mobile telephones, smartphones and other mobile communications devices to communicate with each other regarding movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news, personalities, events, projects, planned or potential projects and events, and regarding computer and video games of the applicant’s mark are all different types of telecommunication services. Accordingly and upon taking into account the reasoning in the preceding paragraph, these services are similar to computer programs in Class 9 of the earlier mark.

Contested services of Class 41

The contested education and providing of training are broad categories, including the earlier marks technical training, in the areas of security technology, radio technology, explosion protection, bus systems, programming and application of electro-technical and electronic apparatuses, appliances and goods (included in class 9), especially in the field of industrial automation, control and feedback control systems. Since the Opposition Division may not ex officio dissect the broader category of the services of the contested sign, they are considered identical to the services in the same class of the earlier mark.

Providing information relating to education, provided online from a computer database or the internet, and via mobile telephones, smartphones and other mobile communications devices of the contested mark is similar to the earlier mark’s technical training, in the areas of security technology, radio technology, explosion protection, bus systems, programming and application of electro-technical and electronic apparatuses, appliances and goods (included in class 9), especially in the field of industrial automation, control and feedback control systems. Both services are education-related. Education organisations often provide also information related to education, the relevant public of the services coincides and they may share the same distribution channels.

Publication of online journals, namely, blogs featuring information regarding movies, movie show times, movie trailers, movie ratings and reviews, and movie industry news of the contested sign is similar to computer programs in Class 9 of the earlier mark. ‘Online journals’ in the contested services is a type of an electronic publication, as the service itself is the making available to the public of such online journals on different online media. Often producers, who develop software designated specifically for online publication of content, also offer the service of making such content available. Such software and the service of publication of online journals therefore have the same purpose, and further may coincide in their end users.

Providing computer and video games online and via mobile telephones, smartphones and other mobile communications devices and providing information regarding computer games and computer enhancements for games online and via mobile telephones, smartphones and other mobile communications devices of the contested mark are similar to a low degree to the opponent’s computer programs in Class 9 as they can coincide in producers: for example, the same companies might write the programs and provide the game services and related advice. Furthermore, they can coincide in distribution channels. The same reasoning applies to the contested providing an interactive database, for entertainment purposes, featuring information about movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news, personalities, events, projects, planned or potential projects and events online and via mobile telephones, smartphones and other mobile communications devices and the opponent’s computer programs in Class 9. On these arguments these services and goods are considered similar to a low degree.

Entertainment services, namely, providing information regarding movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news and information regarding celebrities, events, projects, and planned or potential events and projects via a website on the internet and via mobile telephones, smartphones and other mobile communications devices; interactive entertainment services, namely, providing information regarding movies, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news and information regarding celebrities, events, projects, and planned or potential events and projects via a website on the internet and via mobile telephones, smartphones and other mobile communications devices; providing information relating to entertainment, provided online from a computer database or the internet, and via mobile telephones, smartphones and other mobile communications devices; production and distribution of television shows and movies; providing facilities for movies, shows, plays, music of educational training; entertainment; sporting and cultural activities do not reveal similarity with the goods and services of the opponent and are therefore dissimilar. These services are not directly related to any of the opponent’s goods or services. They have different purposes and natures. They are neither complementary nor in competition, satisfy different needs, have distinct distribution channels and originate from different undertakings.

Contested services in Class 42

Scientific and technological services and research and design relating thereto of the applicant’s mark are a broad category, including or at least overlapping with the opponent’s services research services, especially in the fields of engineering, communications engineering, control engineering and software engineering; technical analysis relating to equipments for use in security and/or process engineering; technical project planning and consultancy therefor, especially with regard to plant design, plant programming, plant parametrisation and plant implementing. Hence, these services are identical.

The contested industrial analysis and research services are a broad category, which includes or at least, overlaps with the earlier mark’s research services, especially in the fields of engineering, communications engineering, control engineering and software engineering and technical analysis relating to equipments for use in security and/or process engineering. Therefore, these services are considered identical.

The services design and development of computer hardware and software are identically included in the list of services of both marks.

The applicant’s application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, websites, and databases in the field of movies partially overlap with the services design and development of computer software of the earlier mark (in the part related to development of applications and software) and are partially similar to these services, since the entities developing computer software usually provide maintenance, management and other type of services related to software, as well as offer services related to website and databases development and their related maintenance, management and hosting. These services coincide in their end user and distribution channels. Accordingly, the referenced services are partially identical and partially similar to the services of the earlier mark.

Application service provider, namely, movie show times, movie trailers, movie ratings and reviews, movie roles, movie plots, actors, producers, directors, and movie industry news, personalities, projects, planned or potential projects and events, and for enabling users to create personal databases of movie related information, reviews, video clips, actor profiles and fan clubs, actor photos, movie industry news, celebrity gossip, and games and quizzes of the contested sign is similar to design and development of computer software of the earlier mark because often the entities developing software offer also application service provider services. There is also coincidence in the end users and the distribution channels.

Contested services in Class 45

Online social networking services and internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials; social networking services provided online and via mobile telephones, smartphones and other mobile communications devices are services related to online platforms to build social networks and social relations among people. All these contested services are provided online via communications networks and have themselves the purpose of building up a community and allowing users to communicate and interact. Therefore these services are similar to the opponent’s providing access to information provided in a computer network, especially in the form of an online search assistants, providing access to databases in Class 38, which is a broad category that may include provision of access to different kinds of information on the internet such as access to mail accounts, chat lines, social networks, etc. Indeed, the services under comparison have a similar nature, may originate from the same undertakings and target the same end users. Furthermore, they are complementary.

The contested providing a website on the internet for the purpose of social networking is similar to the opponent’s providing access to information provided in a computer network, especially in the form of an online search assistants, providing access to databases in Class 38, which is a broad category that includes provision of access to different types of websites, including among others to websites that provide social networking possibilities. The services under comparison have a similar nature, may originate from the same undertakings and target the same end users. They are also complementary.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical and similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge and expertise. The degree of attention may vary from average to high depending on the specific goods or services, the price, frequency of purchase and how specialised the goods or services are, for instance design and development of computer hardware and software is a service not purchased on a daily basis, should meet specific technical requirements and could be quite expensive.

3. The signs

PHOENIX CONTACT	PHONIX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a word mark, composed of the English words ‘PHOENIX’ and ‘CONTACT’. ‘PHOENIX’ is based on the Latin word ‘phoenīx’ and has the meaning of a mythical bird living in the Arab deserts hundreds of years before burning itself to ashes on a funeral pyre ignited by the sun and fanned by its own wings, only to rise from its ashes with renewed youth to live (Oxford English Dictionary). The word exists in similar forms in most of the European Union languages, for example in German – ‘Phönix’, French – ‘phénix’, Spanish, Slovak and Czech – ‘fénix’, etc. Accordingly, it is likely that the word is understood with its meaning of a mythical cyclically reborn bird by the majority of the relevant public. In view of the meaning of the word, it is not related in any way to the goods or services at issue. Accordingly, ‘PHOENIX’ has a normal degree of distinctiveness irrespective of whether the public associates it with a meaning or not.

As for the word ‘CONTACT’, the same or very similar word to it exists in almost all European Union languages – for example ‘contact’ in French, ‘Kontakt’ in German, Dutch, Swedish, etc. Therefore, the word is likely to be understood by the majority of the relevant public with its meaning of ‘the state or condition of touching’ (Oxford English Dictionary). The meaning of the word is perceived as descriptive with respect to part of the goods and services, for example the telecommunication-related services in Class 38, part of the goods of Class 9, etc. In that respect, an element that is descriptive of the goods or services in question is recognised as having only a weak or very weak distinctive character (22/10/2010, T-563/08, CARBON CAPITAL MARKETS, ECLI:EU:T:2010:251, § 39 and the case law cited). Accordingly, ‘CONTACT’ will be very weak for part of the goods and services at issue for the consumers who understand the meaning of the word and with a normal degree of distinctiveness for the remaining part/goods and services.

The word ‘PHONIX’, which constitutes the entire contested sign, has no meaning in any of the European Union languages. However, as can be seen from the above examples, it is very close to the word for ‘phoenix’, for example in German language it is only the diaeresis (umlaout) over the letter ‘O’ that is missing. Therefore, it is possible that part of the public perceives the sign as a misspelling of ‘PHOENIX’ or the equivalent word in their respective language. Accordingly, it is likely that part of the public links the word with the above-explained meaning of a mythical bird. Considering the goods and services at issue, the word has a normal degree of distinctiveness, irrespective of whether it is associated with a meaning or not.

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

Visually, the signs coincide in ‘PHO*NIX’, namely all six letters of the contested sign are contained in the same order in the first word of the two-word combination of the earlier mark, the only difference being that the word in the earlier mark contains the additional letter ‘E’. This letter does not significantly influence the visual perception of ‘PHOENIX’ as compared to ‘PHONIX’, since it is positioned in the middle of the word and is not able to outweigh the similarity, due to the identical first and last three letters of the compared elements. The earlier mark also contains the word ‘CONTACT’ on the second place, which as explained above would be very weak for part of the public regarding part of the goods and services.

Upon taking into account the above, the compared signs are considered visually similar at least to an average degree.

Aurally, the consumers who know English language will pronounce the earlier sign as [FI-NIKS-KON-TAKT], while the rest may pronounce it as [FO-E-NIKS-KON-TAKT] or even [PHO-E-NIKS-KON-TAKT]. The contested sign will be pronounced as [FO-NIKS] or [PHO-NIKS]. Accordingly, depending on the pronunciation rules in the respective territory, the pronunciation of the signs coincides for part of the public in the sound of the letters ‛PHO*NIX’, present identically in both signs or of the letters ‘PH*(*)NIX’, as in the latter case the ‘OE’ letter combination in the earlier mark will be pronounced as a single sound, i.e. the difference will be in one sound only. The pronunciation will further differ in the very weak element for part of the goods and services in the earlier mark, namely ‘CONTACT’, which has no counterpart in the contested one.

Upon taking into account that the first element of the earlier mark and the contested one differ only in one sound and that the coinciding sounds are in the same order, the signs are considered aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be conceptually similar al least to an average degree for the part of the public which perceives meaning in both of them, they will be conceptually not similar for those who do not see a meaning in the contested mark and conceptual comparison will not be possible for those who do not associate any of the signs with a particular meaning.  

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

4. Distinctiveness of the earlier mark

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

The opponent has claimed that the earlier mark has gained a high level of recognition but has not filed any evidence in order to prove such claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a very weak element in the mark for part of the goods and services, as stated above in section c) of this decision.

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).

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).  

It has been established that the goods and services are partially identical, partially similar to different degrees and partially dissimilar. The relevant public is composed of the public at general and professionals, with a varying degree of attention depending on the goods and services in question. The earlier mark has a normal degree of distinctiveness in relation to the goods and services at issue. The signs have been found to be visually and aurally similar at least to an average degree and conceptually similar al least to an average degree for part of the public, while for other parts of the public the signs have been found to be conceptually not similar or a conceptual comparison has been established to be impossible.

Upon taking into account that the contested sign is entirely contained in the first out of two word elements in the earlier mark, the only difference being in one letter, that the first element of the earlier mark is the one that will mainly focus the consumer’s attention given its first position and the weak character of the second word element of the sign for part of the goods and services, the principle of imperfect recollection and the interdependence between the relevant factors, it is considered that the there is a likelihood of confusion with respect to the goods and services found to be identical or similar to varying degrees. It is true that with respect to part of the goods and services the level of attention of the relevant public is higher than average, however 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 the case at hand the differences in the first element of the earlier mark and the contested sign is quite likely not to be noticed or remembered, given it is confined to a one letter only placed in the middle of the word.

Therefore, the opposition is partially well founded on the basis of the opponent’s international trade mark registration No 1 125 907, designating the European Union. It follows from the above that the contested trade mark must be rejected for all identical and similar (irrespective of the found degree of similarity) goods and services of Classes 9, 35, 38, 41, 42 and 45.

As similarity of the goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at the services of Classes 35 and 42, found to be dissimilar, cannot be successful.

The opponent has also based its opposition on the international trade mark registration No 1 125 906  (figurative), designating the European Union and European Union trade mark registration No 12 787 339 ‘PHOENIX’ (word). The list of goods and services of the former is identical to the one of the earlier right on which the opposition has been examined. The list of goods of the latter mark includes goods of Classes 9, 11 and 17. In particular, they are the following:

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) and teaching apparatus and instruments, except electric welding apparatus and arc welding apparatus and accessories therefor; Data processing apparatus and computers; Rectifiers, Invertors, Voltage converters, Electric measuring apparatus for electric installations, in particular for photovoltaic installations, Electric energy accumulators, Batteries, Electric batteries, Charge controller, Electrical cables, Small electrically operated apparatus equipped with photovoltaic cells or modules and batteries; Apparatus, instruments and installations for converting mechanical energy into electrical energy, centrifugal-mass storage units in these installations; Apparatus, instruments and installations for converting heat into electrical energy, electrolytic cells, fuel cells; Control mechanisms for tracker systems. 

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, the aforesaid goods in particular for use in solar thermal or photovoltaic installations; Hot water cylinders, Heating boilers.

Class 17: Insulating material, in particular thermal insulation, in particular for apparatus for heating, refrigerating and ventilating purposes. 

The services of Classes 35 and 41 of the applicant, found to be dissimilar in the above comparison, do not reveal any similarities with the goods of European Union trade mark registration No 12 787 339 , either. These services are not directly related to any of the goods in question. They have different purposes and natures. They are neither complementary nor in competition, satisfy different needs, have distinct distribution channels and originate from different undertakings.

In view of the foregoing, the outcome on any of international trade mark registration No 1 125 906, designating the European Union and European Union trade mark registration No 12 787 339 cannot be different with respect to the services for which the opposition has already been rejected.

The opponent has also invoked Article 8(1)(a) EUTMR as grounds for its opposition. The application of this ground requires identity between the goods and services and identity between the signs. In the case at hand the opposition is not successful on the grounds of Article 8(1)(b) EUTMR only with respect to the services found to be dissimilar. Apparently, the opposition must also fail with respect to those services on the grounds of Article 8(1)(a) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Eva Inés PÉREZ SANTONJA

Teodora TSENOVA-PETROVA

Vít MAHELKA

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.