OPPOSITION No B 2 034 216

Vidis GmbH, Rungedamm 37, 21035 Hamburg, Germany (opponent), represented by Hogertz LLP Rechtsanwälte, Am Kupfergraben 6, 10117 Berlin, Germany (professional representative)

a g a i n s t

Cloudsoft Corporation Limited, 13 Dryden Place, Edinburgh, Midlothian EH9 1RP, United Kingdom (applicant), represented by Gill Jennings & Every LLP, The Broadgate Tower, 20 Primrose Street, London EC2A 2ES, United Kingdom (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 034 216 is upheld for all the contested goods.

2.        European Union trade mark application No 10 619 187 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 10 619 187, namely against all the goods in Class 9 and some of the services in Class 42. In the course of the proceedings, the contested services were deleted by the applicant and consequently the opposition is directed against the goods in Class 9 only. The opposition is based on, inter alia, European Union trade mark registration No 7 301 211. The opponent invoked Article 8(1)(b), 8(5) and 8(4) 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 European Union trade mark registration No 7 301 211.

1. The goods

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

Class 9: Data-processing equipment and computers; computer and console peripherals; computer and console keyboards; computer and console programs (recorded);computer and console programs (downloadable) computer and console software (recorded); accessories for electronic devices of all kinds, in particular for games consoles and other consumer electronics; amusement apparatus adapted for use with an external display screen or monitor.

In the opposition stage, by its request of 08/11/2016, the applicant limited its list of goods in Class 9 and deleted the contested services in Class 42. Accordingly, the contested goods are the following:

Class 9: Computer software and computer programs in the field of data storage and data retrieval with focus on efficiency and low latency; computer software and computer programs for managing the distributed execution of IT management processes or application components within a distributed networking environment, including design, execution and monitoring functionality; computer software for use in IT support operations for automating operational procedures for IT management, namely configuration, start-up/shut-down, fail over, disaster recovery, dynamic changes to routing or location of processing, and dynamic capacity management; computer software and computer programs for providing a development form to extend a distributed execution capabilities of existing and newly-developed applications, namely dynamic clustering, orchestrated fail over and dynamic capacity management; computer software and computer programs for use in enterprise application integration, namely, to enable secure delivery of an application on a global computer network; computer software and computer programs for use in enterprise application integration, namely, to enable secure delivery of information, data, software and network services between disparate software applications and systems over computer networks; computer software and computer programs for use in managing online business and operational networks; computer software and computer programs network monitoring and management; computer software and computer programs for use in deploying and accessing interactive business and operational services.

The term ‘in particular’, used in the opponent’s list of goods, 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods 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.

The contested computer software and computer programs in the field of data storage and data retrieval with focus on efficiency and low latency; computer software and computer programs for managing the distributed execution of IT management processes or application components within a distributed networking environment, including design, execution and monitoring functionality; computer software for use in IT support operations for automating operational procedures for IT management, namely configuration, start-up/shut-down, fail over, disaster recovery, dynamic changes to routing or location of processing, and dynamic capacity management; computer software and computer programs for providing a development form to extend a distributed execution capabilities of existing and newly-developed applications, namely dynamic clustering, orchestrated fail over and dynamic capacity management; computer software and computer programs for use in enterprise application integration, namely, to enable secure delivery of an application on a global computer network; computer software and computer programs for use in enterprise application integration, namely, to enable secure delivery of information, data, software and network services between disparate software applications and systems over computer networks; computer software and computer programs for use in managing online business and operational networks; computer software and computer programs network monitoring and management; computer software and computer programs for use in deploying and accessing interactive business and operational services are specific types of software, which may be recorded or downloadable. They overlap with the opponent’s computer software (recorded). These goods are, therefore, identical.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical are directed at both the public at large and at business customers with specific professional knowledge in IT.

The degree of attention may vary from average to higher than average (for example, selection of the specific software of the applicant requires higher than average attention as specialist expertise is needed there).

3. The signs

	BROOKLYN
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 consists of the word ‘Brooklyn’ in standard bold letters and a figurative element consisting of a circle and four triangles pointing in different directions. The word element is the dominant element, given its size. It is also distinctive, because it will be understood by a significant part of the relevant public as the name of one of the boroughs of New York City and, thus, has no connection with the relevant goods. For the remaining part of the public, this word is meaningless and distinctive. The figurative element does not convey any particular concept, has no meaning in relation to the relevant goods and is therefore distinctive.

The contested sign consists only of the word ‘BROOKLYN’. Since it is a word mark, it is immaterial that it is written in upper case. The above assertions regarding this word’s meaning and distinctiveness apply here also.

Visually, the signs coincide in the word ‘Brooklyn’ and differ in the earlier mark’s additional figurative element.

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).

Since this differing figurative element has a secondary role and the coinciding word is depicted in standard characters in the earlier mark, the signs must be considered visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BROOKLYN’, present identically in each signs as its only verbal element. As a result, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs’ coinciding word element and the lack of any concept in the remaining, differing element. As both signs will be perceived as referring to a widely known geographical location by a significant part of the relevant public, they are conceptually identical. For the remaining part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

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.

According to the opponent, the earlier mark enjoys an enhanced scope of protection. However, for reasons of procedural economy, this claim does not have to be assessed in the present case.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are identical and the signs are aurally and, for a significant part of the public, conceptually identical, and they are visually highly similar. The signs contain the same word and only differ in the earlier mark’s additional figurative element, which has a secondary role. In any event, consumers generally refer to signs by their verbal elements, and the signs’ verbal elements are the same in the present case.

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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 301 211. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right examined leads to the success of the opposition and to the rejection of the contested trade mark for all the contested goods, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) 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.

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

Marianna KONDÁS

Ferenc GAZDA

Zuzanna STOJKOWICZ

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.