OPPOSITION No B 2 742 834

Carl Konferenz und Eventtechnik GmbH und Co., Winterhuder Marktplatz 10, 22299 Hamburg, Germany (opponent), represented by Taylor Wessing, Hanseatic Trade Center  Am Sandtorkai 41, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Your Voice USA Corp., c/o GC Consultants, Inc. 444 Madison Avenue, suite 1206, New York, United States of America (applicant), represented by Metroconsult S.r.l., Via Foro Buonaparte, 51, 20121 Milano, Italy (professional representative).

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

DECISION:

1.        Opposition No B 2 742 834 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 343 247 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 343 247, . The opposition is based on European Union trade mark registration No 12 451 522, . The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods and services

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

Class 9:        Computer programmes [programs], recorded.

Class 38:        Message collection and transmission services; forums [chat rooms] for social networking; electronic mail; hire of message delivery apparatus; electronic transmission of messages, data and documents; provision of access to electronic messaging systems.

The contested goods and services are the following:

Class 9:        Computer software; computer software for instant messaging; electronic file sharing software; communications software for electronic exchange of data, audio files, video files, images in electronic form, via computer networks, networks for mobile devices, wireless networks and communications networks; software for interconnection of electronic devices, electronic devices and individuals, and individuals; application software (apps) for interconnection of mobile electronic devices, mobile electronic devices and individuals, and individuals; software for interconnection of electronic devices based on TCP/IP; software for wireless interconnection of electronic devices; software for chat communications between electronic devices, electronic devices and individuals, and individuals; software for wireless interconnection of electronic devices, electronic devices and individuals, and individuals, over a short range; software for interconnection of electronic devices, electronic devices and individuals, and individuals, over a long range.

Class 38:        Telecommunications; telecommunication services; transmission and reception of data using telematic networks; instant messaging; electronic exchange of data, audio files, video files, images in electronic form, via computer networks, networks for mobile devices, wireless networks and communications networks; chat services; managing of chatrooms; providing chat lines utilising the internet; chatrooms for social networking; chatroom services for social networking; providing of online chatrooms for social networking; forums for social networking; providing of online chatrooms for exchanging messages between users of electronic devices; telecommunications for interconnection of electronic devices, electronic devices and individuals, and individuals; telecommunications for interconnection of mobile electronic devices, mobile electronic devices and individuals, and individuals; telecommunications for interconnection of electronic devices based on TCP/IP; telecommunications for wireless interconnection of electronic devices; telecommunications for chat communications between electronic devices, electronic devices and individuals, and individuals; telecommunications for short range wireless interconnection of electronic devices, electronic devices and individuals, and individuals; telecommunications for long-range interconnection of electronic devices, electronic devices and individuals, and individuals.

Class 45:        Online social networking.

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

Computer software is identically contained in both lists of goods (including synonyms).

The contested computer software for instant messaging; electronic file sharing software; communications software for electronic exchange of data, audio files, video files, images in electronic form, via computer networks, networks for mobile devices, wireless networks and communications networks; software for interconnection of electronic devices, electronic devices and individuals, and individuals; application software (apps) for interconnection of mobile electronic devices, mobile electronic devices and individuals, and individuals; software for interconnection of electronic devices based on TCP/IP; software for wireless interconnection of electronic devices; software for chat communications between electronic devices, electronic devices and individuals, and individuals; software for wireless interconnection of electronic devices, electronic devices and individuals, and individuals, over a short range; software for interconnection of electronic devices, electronic devices and individuals, and individuals, over a long range are included in the broad category of the opponent’s computer programmes [programs], recorded. Therefore, they are identical.

Contested services in Class 38

The contested telecommunications; telecommunication services include, as broader categories, the opponent’s message collection and transmission services. 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 transmission and reception of data using telematic networks are included in, or overlap with, the broad category of the opponent’s electronic transmission of data. Therefore, they are identical.

The contested instant messaging is included in the broader category of the opponent’s electronic transmission of messages. Therefore, they are identical.

The contested electronic exchange of data, audio files, video files, images in electronic form, via computer networks, networks for mobile devices, wireless networks and communications networks are included in the broader category of the opponent’s electronic transmission of messages, data and documents. Therefore, they are identical.

The contested chat services are included in, or overlap with, the broader category of the opponent’s electronic transmission of messages. Therefore, they are identical.

The contested managing of chatrooms; chatrooms for social networking; chatroom services for social networking overlap with the opponent’s forums [chat rooms] for social networking, since these services relate to the technical management of forums, chatrooms and social networking. Therefore, they are identical.

The contested providing chat lines utilising the internet; providing of online chatrooms for social networking; providing of online chatrooms for exchanging messages between users of electronic devices overlap with opponent’s provision of access to electronic messaging systems, since these services relate to the provision of access to various kinds of social networking or messaging systems. Therefore, they are identical.

Forums for social networking are identically contained in both lists of services (including synonyms).

The contested telecommunications for interconnection of electronic devices, electronic devices and individuals, and individuals; telecommunications for interconnection of mobile electronic devices, mobile electronic devices and individuals, and individuals; telecommunications for interconnection of electronic devices based on TCP/IP; telecommunications for wireless interconnection of electronic devices; telecommunications for chat communications between electronic devices, electronic devices and individuals, and individuals; telecommunications for short range wireless interconnection of electronic devices, electronic devices and individuals, and individuals; telecommunications for long-range interconnection of electronic devices, electronic devices and individuals, and individuals are telecommunications services related to the interconnection of electronic devices and individuals. The opponent’s message collection and transmission services are telecommunication related to the transmission of messages, for example, through chat or email. In order to chat and send emails an interconnection between electronic devices is necessary to send and receive such messages (i.e. chat messages and emails). Therefore, the contested services are complementary to the opponent’s. Moreover, these conflicting telecommunication services are provided by the same companies and they target same relevant publics. Consequently, they are at least similar.

Contested services in Class 45

The contested online social networking are mainly platform services to build social networks or social relations among people who, for example, share interests, activities, backgrounds or real-life connections. A social network service consists of a representation of each user (often a profile), his/her social links and a variety of additional services. Most social network services are web-based and provide means for users to interact over the internet, such as email and instant messaging. Social networking sites allow users to share ideas, pictures, posts, activities, events and interests with people in their network. Therefore, the contested services are similar to the opponent’s forums [chat rooms] for social networking in Class 38, which include providing of the technical (telecommunication) access to forums and chat rooms, which are examples of social networking. These conflicting services are complementary, they have similar natures, may originate from the same companies and target same relevant publics.

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 or similar are directed at the public at large and at a more specialised public with specific knowledge and expertise within IT and telecommunication. As the goods and services of both marks target the public at large and professionals, the assessment of the likelihood of confusion will be assessed against the perception of the part of the public that is more prone to confusion, that is, the general public. For the general public under analysis, the degree of attention is considered average.  

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, since for this part of the public the signs are more similar.  

The earlier mark is composed of the verbal elements ‘ON’ and ‘SCR*N’. It is difficult to steadily ascertain how the public will perceive the part preceding the last letter ‘N’ of the latter word element, namely as a capital ‘I’ or as two ‘E’s’ facing each other. The Opposition Division will in the following focus its comparison of signs on the part of the public that perceives the element as two ‘E’s’, since this is a plausible scenario and it will be perceived as such by a significant part of the public. Neither ‘ON’ nor ‘SCREEN’ will be perceived as conveying any meaning by the public under analysis and are distinctive elements. Most of the figurative elements of the sign are, contrary to what the applicant claims, merely decorative and weak; they are composed of standard upper case letters in grey, placed inside a rectangular shaped logo. An exception should be made with the ‘double inverted E’ being depicted in a three-dimensional and more original squared logo within this standard rectangular logo.

In the contested sign, the initial element verbal element, ‘One’, will be understood as ‘one’ in English. One’ is a basic word in English that will be understood throughout the European Union as synonymous with ‘the best’ or ‘the number one (product on the market)’. This concept is further highlighted by the sign’s figurative element; a number ‘1’ in white, placed inside a black circle, which is merely a banal geometric shape with low distinctiveness. Therefore, ‘One’ and ‘1’ are laudatory and weak elements in the contested sign. Nevertheless, the word ‘Screen’ is meaningless for the public under analysis and is distinctive. The contested sign contains no elements which are clearly more dominant than other elements.

Visually, both signs will be perceived as containing ‘Screen’ by the public taken into account (as stated above). Moreover, the initial verbal element of the earlier mark (‘ON’) is short of only one letter (‘E’) to the initial verbal element of the contested sign (‘One’). In this regard, the Opposition Division notes that since ‘One’ and ‘Screen’ begin with capital letters, ‘OneScreen’ is likely to be read as two word elements (rather than one) in the contested sign. The signs differ in that the verbal elements of the earlier mark have a space in between them and in their figurative elements, which, as described above, are mainly weak elements. In addition, consumers generally tend to focus on the word elements of signs. Indeed, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consequently, since the signs’ initial verbal elements only differ in one letter (‘ON’ and ‘One’) and the following word elements will be perceived as the same (‘Screen’), the signs are visually similar to an average degree.

Aurally, the public under analysis is likely to pronounce ‘One’ in the contested sign as in English; that is, the final ‘e’ being silent. Therefore, a significant part of the public will pronounce ‘ON’ and ‘One’ as highly similar. Moreover, the following verbal element of the earlier mark (perceived as ‘SCREEN’ by the public under analysis) will be pronounced identically to ‘Screen’ in the contested sign. Since the number ‘1’ may not be pronounced in the contested sign, being a weak element, the signs are aurally highly similar.  

Conceptually, although the public in the relevant territory will perceive the concept of ‘one’ (both as a word and a number) in the contested sign, these are weak elements and concepts in the sign. The remaining verbal elements of the signs (‘ON and ‘SCREEN’) convey no meaning for the non-English-speaking part of the relevant public. Since one of the signs (the earlier mark) will not be associated with any meaning, 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.

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods and services are partly identical and partly similar to an average degree. The signs are visually similar to an average degree and highly similar aurally for the public taken into account, whereas the signs are conceptually not similar. Nevertheless, the Opposition Division finds that these conceptual dissimilarities cannot outweigh the signs’ visual and aural similarities, especially since the conceptual dissimilarity lies in a weak concept. Moreover, reference is made to the principal of interdependence (as explained above) and the fact that the goods and services are identical and similar to an average degree. In addition, the earlier mark is distinctive and the relevant public’s degree of attention is average. Account is also 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).

In its observations, the applicant argues, and has also provided evidence for, that ‘on-screen’ is weak for the goods and services at issue, and that, that is also ‘recognized by non-English language dictionaries’, such as Italian ones. The applicant also makes reference to that ‘on-screen’ is a very well-known technique in the field of telecommunications and electronics, namely, that ‘provides for displaying, on a TV screen, information items such as the channel that is currently selected by the tuner, the volume level, the time, etc.’. Finally, the applicant refers to that the word ‘SCREEN’ ‘merely designates a component of electronic devices and, as such, has a purely descriptive connotation’.  

It is true that ‘on-screen’ or ‘screen’ may be perceived as weak for the goods and services referred to by the applicant. However, this applies first and foremost to the professional part of the non-English-speaking part of the public (i.e. professionals in IT and telecommunication), which has, in general, an enhanced knowledge of English, due to the IT-jargon being generally made up by English words. Nevertheless, and as explained in section b) of this decision, likelihood of confusion is in this case assessed against the perception of the general public, which will not make any direct and immediate association between ‘on-screen’ and/or ‘screen’ and the relevant goods and services. In this regard, the Opposition Division also makes reference to that the goods and services at issue relate to computer software and telecommunication for social networking, and do not directly relate to the electronic devices as shown in Annexes 3 and 4, attached by the applicant. It therefore follows that the evidence filed does not demonstrate that the non-English-speaking part of the general public in the relevant territory has been exposed to widespread use of, and have become accustomed to, the verbal elements of the earlier mark being weak for the goods and services in question. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the general public. It is sufficient to focus on the general public if a significant part of the relevant public for the goods and services in question may be confused about the origin of the goods and services. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods and services are likely to be confused. 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 also sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 451 522. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

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

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

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

The Opposition Division

Boyana NAYDENOVA

Christian RUUD

Benoit VLEMINCQ

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 Opposition 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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.