OPPOSITION No B 2 596 297
Sky plc, Grant Way, Isleworth, Middlesex TW7 5QD, United Kingdom (opponent), represented by CMS Cameron McKenna Nabarro Olswang, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (professional representative)
a g a i n s t
Skyway DataCenter GmbH, Im Oberen Werk 1, 66386 St. Ingbert, Germany (applicant), represented by Bettinger Scheffelt Kobiako Von Gamm Partnerschaft Mbb Rechtsanwälte Patentanwälte, Bavariaring 14, 80336 München, Germany (professional representative).
On 24/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 596 297 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 464 879 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 464 879. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 500 604. In relation to this earlier right, the opponent invoked Article 8(1)(b) and 8(5) EUTMR. In addition, in relation to other earlier rights, the opponent invoked Article 8(1)(b), 8(4) and 8(5) 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 United Kingdom trade mark registration No 2 500 604.
- The goods and services
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.
The goods and services on which the opposition is based are, inter alia, the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision) and teaching apparatus and instruments; apparatus for recording television programmes; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content; electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; televisions; LCD and plasma screens; home cinema systems; amplifiers; speakers; radios; wireless audio and/or audio visual devices; portable wireless audio and/or audio visual devices; remote controls; games controllers; wireless gaming controllers; wireless keypads; television receivers including a decoder; set-top boxes; digital set-top boxes; high definition set top boxes; personal video recorder; set-top boxes for use in decoding and reception of satellite, terrestrial and cable broadcasts; apparatus for decoding encoded signals including set top boxes for television reception; set top box apparatus including a decoder and an interactive viewing guide; set top box apparatus including a decoder and a recorder for recording television and audio programmes; set top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings; satellite dishes; low noise blocks; satellite meters; computer software to enable searching of data; encoded programs for computers and for data processing and telecommunications; telephones; mobile telephones; PDAs; telephone and radio modems; television receivers including a decoder; set top boxes for use in decoding and reception of satellite, terrestrial cable and digital subscriber line (DSL), Internet or other electronic broadcasts; apparatus for decoding encoded signals; recorded television and radio programmes; recorded programmes for broadcasting or other transmission on television, radio, mobile telephones, PDAs and on PCs; video recordings; multimedia apparatus and instruments; portable or hand-held computers; DVD players; computers; computer hardware; computer hardware, apparatus and instruments all for transmitting, displaying, receiving, storing and searching electronic information; computer programs; electronic computer games; electronic interactive computer games; computer software; computer software and telecommunications apparatus to enable connection to databases and the Internet; computer software supplied from the Internet; network termination equipment; wired and/or wireless computer network routers, modems, firewalls and/or bridges; computer software and computer programs for distribution to, and for use by, viewers of a digital television channel for the viewing and purchase of goods and services; computer games software and computer quiz software; computer video games and/or quizzes adapted for use with television receivers and screens or with video monitors or with computer screens; computer programs for interactive television and for interactive games and/or quizzes; electronic apparatus adapted for use with television receivers in playing games; games consoles; interactive video game devices comprised of computer hardware and software and accessories, namely game consoles, game controllers and software for operating game controllers; portable and/or hand-held electronic devices for interactive computer and video games; portable and/or hand-held electronic devices for receiving, playing and transmitting music, sounds, images, text, signals, information and code; electronic publications; computer games; computer video games; video screens; video projectors; tapes, discs and wires, all being magnetic; cassettes and cartridges, all adapted for use with the aforesaid tapes; blank and pre-recorded audio and video cassettes, tapes and cartridges; compact discs; DVD discs; phonographic records; laser readable discs for recording sound or video; ROM cartridges, CD Roms, cards and discs, integrated circuit cards, memory carriers, recording media, all pre-recorded with computer video games and/or quizzes; encoded cards; radio and television signal antennae; music, sounds, videos, images, text and information provided by a telecommunications network, by on-line delivery and by way of the Internet and/or the world-wide web or other communications network; interactive sound and/or audio recordings; music, video, sound and/or audio recordings (downloadable) provided from MP3 Internet websites; MP3 players, MP3 readers; audio and/or video file recorders and/or players; portable audio and/or video file recorders and/or players; telephone ring tones (downloadable); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus and instruments for the reception of radio and television broadcasts including the reception of cable, satellite and digital broadcasts; smart cards; credit cards; loyalty cards; acoustic apparatus or instruments; adaptors; aerials; antennae; amplifiers; amusement apparatus and instruments adapted for use with an external display screen or monitor; communication apparatus and instruments; encoded or magnetic banking or credit cards; cinematographic film; cinematographic instruments and apparatus; data carriers; apparatus for data storage; electrical telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; film reproducing instruments and apparatus; hand held electrical telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; hand held electronic telecommunications and/or communications and/or broadcast and/or transmission and/or decoding and/or image processing and/or audio visual instruments and apparatus; interactive educational or entertainment games for use with television receivers and video apparatus; mobile telephones; motion pictures; telephone apparatus and equipment; parts and fittings for all the aforesaid goods; sunglasses, leather cases for holding mobile phones; e-sell through products, namely downloadable media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service; cases, containers, protective coverings and parts and fittings therefore, all for use with MP3 players, music storage devices, media storage devices and other consumer electronic devices; electrical, electronic and computer equipment for machinery for use in conservation, generation and efficient use of heat, light and water, including thermostatic controls, solar panels for electricity generation, photovoltaic devices, solar cells and motion detectors; electrical, electronic and computer equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; control and monitoring equipment for use in the generation of alternative energy including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; electronic publications [downloadable), including electronic publications, magazines and newsletters regarding environmental protection, energy conservation and ecology, animal welfare and renewable energy projects, including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels; apparatus and instruments for closed circuit television and surveillance systems; apparatus and instruments for personal security monitoring; apparatus and instruments for home security monitoring and control; home and personal security apparatus; home and personal security devices; home and personal security alarms; electronic protection equipment, including fire detecting and alarm equipment, intruder and burglar alarm equipment and motion detecting equipment; radio, telephonic, television and signalling apparatus and instruments, cameras, sound and video monitoring and recording and sound and video reproducing apparatus and instruments, all for control and telemetry purposes for the home and personal security; closed-circuit television systems (CCTV); monitors; cameras; optical lenses; camera casings; prepackaged cameras; videocassette recorders (VCRs); system controlling software; video monitoring apparatus; detectors; access control apparatus; readers; magnetic or encoded access control cards; monitoring apparatus; electronic panels for alarm management and monitoring; alarm panels; glass breakage detectors; smoke detectors; carbon monoxide detectors; digital audio recorders; digital video recorders; digital audio servers; digital video servers; electrical communication equipment; message programming equipment; radio paging equipment; electronic locking systems; life-saving apparatus and equipment; electric alarms; electronic devices for opening doors; electronic devices for protection; intruder alarms and anti-theft equipment; intruder detection apparatus; motion detecting equipment; electronic control apparatus; electronic apparatus for controlling operation of machines; remote apparatus for controlling operation of machines; computer apparatus for controlling operation of machines; electronic network equipment; electronic communication equipment; message programming devices; electronic locking apparatus; parts and fittings for all the aforesaid goods.
Class 38: Telecommunications services; mobile and fixed telecommunications services; communications services; satellite, cellular and radio communication services; television and radio broadcasting; transmission and communication services; broadcasting and/or transmission of radio and/or television programmes and/or films; satellite, DTT, cable, DSL and broadband broadcasting and/or transmission of audio and/or audio visual programming; transmission of audio, video and/or audio visual programming (by any means); transmission of video films; broadcasting and transmission of television programmes and films to personal computers; broadcasting and communications by means of or aided by computer; transmission of audio, video and/or audio visual programming by Internet protocol (IPTV); telecommunications services over the Internet including but not limited to services provided using voice over Internet protocol (VOIP); provision of access and/or connectivity to broadband networks whether fixed, portable or wireless; transmission of text, messages, sound and/or pictures; telecommunication and/or communication and/or broadcast and/or transmission of audio visual content; communication of information (including web pages), data by radio, telecommunications and by satellite; telephone, mobile telephone, message collection and transmission, radio-paging, call diversion, answerphone and directory enquiry services; personal numbering services; teletext services; loan of replacement telecommunications and communications apparatus and instruments in case of breakdown, loss or theft; computer aided transmission of messages and images; messaging services namely, sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; instant messaging; short message services (SMS); multimedia messaging services (MMS); unified messaging services; voicemail services; provision of telephone ring tones; video conferencing services; video telephone services; providing access to telecommunications infrastructures for other operators; provision of access to electronic conferencing, discussion groups and chat rooms; provision of chat rooms; hire, leasing or rental of apparatus, instruments, installations or components for use in the provision of the aforementioned services; advisory, information and consultancy services relating to all the aforementioned; communications services by satellite, television and/or radio; news agency services; provision of access to news, current affairs and sports information; hiring, rental and leasing of communications apparatus; electronic mail services; telecommunication services relating to the Internet; telecommunication of information (including web pages); provision of location based services for telecommunications and communications apparatus and instruments; provision of wireless application protocol services including those utilising a secure communications channel; provision of information relating to or identifying telecommunications and communications apparatus and instruments; provision of telecommunications links to computer databases and websites on the Internet; telecommunications services dedicated to retailing goods and services through interactive communications with customers; interactive television services being telecommunications and/or communications and/or broadcasting and/or transmission services; interactive services for television viewers including those watching on mobile telephones and PCs being telecommunications and/or communications and/or broadcasting and/or transmission services; television broadcasting services incorporating interactive services for viewing guides and intelligent automated selection for programme recordal; interactive services for television viewers facilitating the recordal of programmes automatically initiated on the basis of customer viewing habits/preferences being telecommunications and/or communications and/or broadcasting and/or transmission services; providing interactive television viewers (including those watching on their mobile telephones or PCs) with access to information, data, graphics, audio and/or audio-visual content from a restricted group of Internet websites or portals; broadcasting and transmission of interactive television, interactive games, interactive news, interactive sport, interactive entertainment and interactive competitions; video on demand and near on demand telecommunication and/or communication and/or broadcast and/or transmission services; streaming delivery of video on demand streams to viewers; providing access to movies, videos and television programmes to viewers on demand and near on demand; professional consultancy services relating to broadcasting; providing access to a database storing information relating to a variety of goods and services; enabling access to the Internet; provision of a connection between websites and television viewers via an interactive television portal; internet portal services; web portal services; provision of broadband services; interactive television portal services providing access to Internet websites for television viewers via their television receiving equipment including digital television receiving equipment; providing access to Internet websites to mobile telephone users; professional consultancy and information and advisory services relating to all the aforesaid services; leasing access time to an information database; telecommunications information; factual information services relating to television broadcasting; audio visual communication services; data communication services; data broadcasting services; delivery of messages; telecommunication and/or communication and/or broadcast and/or transmission of radio programmes, television programmes, films and motion pictures; telecommunication and/or communication and/or broadcast and/or transmission of audio and/or visual material and material from pre-recorded video tapes: transmission of radio programmes, television programmes, films, motion pictures, pre-recorded video tapes, audio and/or visual material, pre-recorded video cassettes, DVDs or pre-recorded video discs; rental, leasing or hire of communications equipment; message sending; telephonic or telephone communications services; wireless communication services; e-sell through services, namely delivery by telecommunication of media content, including video and films, television programmes, computer games, music, images and ring tones provided by internet, telephone line, cable, wireless transmission, satellite or terrestrial broadcast service; organisation of call information; call screening services; call alerting services; computer services for accessing a communications or computer network; computer services for accessing entertainment, education, information and data via telephone, line, cable, wire or fibre, database or computer network; computer services for accessing and retrieving information, messages, text, sound, images and data via a computer or computer network; computer services for accessing and retrieving radio and television programmes; consultancy, advising or providing information in relation to the foregoing; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.
Class 42: Design and development of computer hardware and software; design, drawing and commissioned writing all for the compilation of web pages on the Internet; hosting websites; creating and maintaining websites; computer services for interactive communications and broadcasting; installation, rental and maintenance of computer software; weather forecasting; maintenance and repair of interactive video game devices comprised of computer software and accessories, namely software for operating game controllers; home computer services namely computer consultancy, installation, repair and maintenance of computer software, updating software and computer support services; computer services, namely the organisation of an infrastructure to enable television subscribers to access internet services via the television; advice relating to the development of computer systems; advisory services relating to computer based information systems; advisory services relating to computer hardware or software; design, installation, maintenance or updating of computer software; design of computer hardware; design services; designing electrical or electronic systems; design services for artwork for animated films; monitoring and analysis of call information; computer programming services; internet walled garden services; operation of search engines; rental or leasing of computer hardware or software; testing, research, assessing, consultancy, advising or providing information in relation to the foregoing; computer services for on-line shopping; computer services relating to the processing of orders and payments; weather forecasting; providing information and advice with regard to environmental protection, energy conservation and alternative energy sources, ecology and animal welfare as well as conducting research and drawing up expert reports in the aforementioned fields; research and development of durable use of nature and the environment; technical and legal assistance concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare and effecting such projects; development and testing for renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, and components therefor; effecting research projects concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare; consultancy, information and advisory services relating to all the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet.
The contested goods and services are the following:
Class 9: Computer databases; databases (electronic); computer software adapted for use in the operation of computers; network access server operating software; computer operating programs; operating system programs; computer operating programs, recorded; operating computer software for main frame computers; communications processing computer software; embedded operating software; operating and user instructions stored in digital form for computers and computer software, in particular on floppy disks or cd-rom; computer operating systems; firmware for computer peripherals; firmware; computer antivirus software; application software; application software for cloud computing services; application software for social networking services via internet; computer software downloaded from the internet; vpn [virtual private network] operating software; computer application software; computer utility programs [program performs computer maintenance work]; computer programs [downloadable software]; computer communication software to allow customers to access bank account information and transact bank business; computer programs for project management; computer programmes for use in telecommunications; computer programs for connecting remotely to computers or computer networks; computer programs for accessing and using the internet; computer programs for using the internet and the worldwide web; computer programmes relating to local area networks; computer programs for the enabling of access or entrance control; computer interface apparatus; computer software in the field of electronic publishing; computer software for document management; computer software for database management; computer software for business purposes; computer software for advertising; computer software for accessing information directories that may be downloaded from the global computer network; computer e-commerce software; computer software for processing market information; computer software designed to estimate resource requirements; computer software for communication between computers over a local network; computer software for administration of local area networks; computer software for computer aided software engineering; computer software for analysing market information; computer software for application and database integration; computer software to automate data warehousing; computer software for use in providing multiple user access to a global computer information network; computer software to enable the searching of data; computer software for creating dynamic websites; computer software for use in creating and designing websites; computer software for the creation of firewalls; computer software for creating searchable databases of information and data; computer software for authorising access to data bases; computer software for controlling and managing access server applications; computer software that assists computers in deploying parallel applications and performing parallel computations; computer software for encryption; computer software for use in migrating between different computer network operating systems; computer software for use in remote meter reading; computer software for use in computer access control; computer software for time control; computer software platforms; computer software programs for spreadsheet management; data communications software; data processing programs; computer programmes for data processing; digital telephone platforms and software; printer programmes; decoder software; computer software development tools; computer firewall software; freeware; recorded computer programs; recorded computer software; computer groupware; downloadable software; downloadable computer security software; downloadable computer software for remote monitoring and analysis; computer programmes stored in digital form; interactive computer software; interfaces for computers; communication software; communication software for connecting computer network users; communication software for connecting global computer networks; lan [local area network] operating software; magnetic tapes for memorising software programs; magnetic supports for software; monitors [computer programs]; computer programs for network management; network operating system programs; personal computer application software for document control systems; personal computer application software for managing document control systems; printer spooler software; programs for computers; process controlling software; computer telephony software; computer software for biometric systems for the identification and authentication of persons; software for the operational management of portable magnetic and electronic cards; financial management software; software for debt recovery; software for commerce over a global communications network; internet access software; computer software applications, downloadable; desktop publishing software; software for diagnostics and troubleshooting; software for online messaging; data compression software; graphical user interface software; community software; privacy protection software; website development software; control segment integration software; software to control building environmental, access and security systems; computer software to maintain and operate computer system; software for ensuring the security of electronic mail; software for searching and retrieving information across a computer network; software development kit [sdk]; cartridges [software] for use with computers; computer software packages; controlling software for computer printers; wan [wide area network] operating software; software; recorded data files; directories [electric or electronic]; data recorded electronically; magnetic recordings; recorded data [magnetic]; pre-programmed discs; recorded content; artificial intelligence apparatus; computerised personal organisers; data exit terminals; data exchange units; data entry terminals; data terminals; data conversion apparatus; data processing equipment; data processing terminals; data processing apparatus; data processing systems; real-time data processing apparatus; electronic data processing equipment; programming units (electric -); programming units (electronic -); electronic calculators.
Class 38: Telecommunication services; computer communication and internet access; consultancy in the field of telecommunications; consultancy services relating to data communications; electronic communications consultancy; information, consultancy and advisory services relating to telecommunications; communication network consultancy; advisory services relating to communications equipment; consulting services in the field of electronic communications; providing access to telecommunication networks; providing access to electronic communications networks and electronic databases; providing high speed access to computer and communication networks; provision of communications facilities for interchange of electronic data; providing electronic telecommunication connections; remote transmission of data by means of telecommunications; transfer of data by telecommunications; data transmission; data communication by electronic means; transmission of data by laser beam; data transmission for others; data transmission and reception services via telecommunication means; high bit-rate data transmission services for telecommunication network operators; data transmission services over telecommunications networks; digital transmission of data; digital communications services; digital transmission of data via the internet; digital transmission services for audio and video data; digital transmission services; providing video conferencing services; communication of information by electronic means; electronic communications services; communication services for the electronic transmission of data; electronic transmission of voices (services for the -); electronic transmission of instant messages and data; electronic and telecommunication transmission services; electronic transmission and retransmission of sounds, images, documents, messages and data; electronic transmission of images (services for the -); electronic transmission of documents (services for the -); electronic transmission of information (services for the -); electronic transmission of messages and data; transmission of written communications (electronic -); professional consultancy relating to telecommunications; optical fibre telecommunications services; secured data, sound and image transmission services; information and advisory services relating to telecommunication services; transmission of information via national and international networks; transmission of information by data communications for assisting decision making; interactive communication services; interactive telecommunications services; interactive broadcasting and communications services; cable transmission of sounds, images, signals and data; communication by hertzian wave; communication services provided electronically; communications services for the exchange of data in electronic form; communication services for the electronic transmission of images; communication services for the electronic transmission of voices; communication services for the transmission of information; communication services for the transmission of information by electronic means; communication services by cable; electronic network communications; communications via multinational telecommunication networks; communication by electronic means; telecommunications routing and junction services; value added network [communication] services; network conferencing services; network transmission of sounds, images, signals and data; on-line information services relating to telecommunications; message services; message sending services; transmission of messages and images; message collection and transmission services; message sending, receiving and forwarding; sending [transmission] of news; secure transmission of data, sound or images; signal transmission for electronic commerce via telecommunication systems and data communication systems; voice and data transmission services; telecommunications consultancy; information services relating to electronic communication networks; operation of a telecommunications network; operation of telecommunications systems; operation of wide-band telecommunications networks; operating of electronic communications networks; operating of electronic communications systems; telecommunications services, namely, personal communication services; message sending and receiving services; telecommunications services to obtain information from data banks; telecommunications services for the distribution of data; digital network telecommunications services; telecommunications services between computer networks; telecommunications services provided by means of optical fibre networks; teleconferencing and video conferencing services; transmission of sound by electronic means; transmission of sound via interactive multimedia networks; data communication services accessible by password; data communication services accessible by access code; telecommunications services provided via fiber optic, wireless and cable networks; provision of reports relating to communications; transmission of data, messages and information; message sending; transmission of messages, data and content via the internet and other communications networks; delivery of digital audio and/or video by telecommunications; transmission and reception [transmission] of database information via the telecommunication network; transmission of encrypted communications; communication of data by means of telecommunications; transmission of database information via telecommunications networks; transmission of despatches by electronic means; transmission of information for business purposes; transmission of information for domestic purposes; transmission of information in the audiovisual field; transmission of information through video communication systems; information transmission services via digital networks; transmission of information by electronic communications networks; transmission of information on optical telecommunication networks; transmission of short messages; transmission of short messages [sms], images, speech, sound, music and text communications between mobile telecommunications devices; providing facilities and equipment for video conferencing; provision of communications facilities for the interchange of digital data; video communication services; videoconferencing; video transmission via digital networks; video transmission services; telecommunications access services; delivery of messages by electronic media; transmission of sound, video and information; transmission of sound or visual recordings over networks; transmission of coded messages and images.
Class 42: Computer technology consultancy; telecommunications technology consultancy; technical design and planning of telecommunications networks; rental of calculators; monitoring of telecommunication signals; monitoring of audio warning signals; science and technology services; quality control relating to computer systems; quality control relating to computer software; testing, authentication and quality control; it services; updating of memory banks of computer systems; updating websites for others; analytical services relating to computers; advisory and information services relating to computer peripherals; providing information about the design and development of computer software, systems and networks; computer project management in the field of edp; computer rental and updating of computer software; computer diagnostic services; computerised analysis of data; computer system analysis; development of computer systems; data migration services; computer design and programming services; diagnosing computer hardware problems using software; computer network services; computer analysis; development of systems for the storage of data; development of systems for the processing of data; development of systems for the transmission of data; development of computer based networks; design and development of data processing systems; design and development of electronic database software; design and development of data storage systems; design and development of systems for data input, output, processing, display and storage; design, creation and programming of web pages; designing, managing and monitoring online forums for discussion; preparation of computer programs for data processing; troubleshooting of computer hardware and software problems; monitoring of computer systems by remote access; research relating to computers; research relating to data processing; research relating to the computerised automation of administrative processes; research relating to telecommunication techniques; research in the field of information technology; research in the field of data processing technology; integration of computer systems and networks; computer network configuration services; customization of computer hardware and software; computer project management services; outsource service providers in the field of information technology; server administration; technical research relating to computers; technological services relating to computers; technological research relating to computers; comparative analysis studies of the efficiency of computer systems; comparative analysis studies of the performance of computer systems; rental and maintenance of computer software; rental of computer hardware and computer software; administration of user rights in computer networks; data decryption services; data encryption services; services for reproducing computer programs; data encryption and decoding services; digital compression of computer data; compression of data for electronic storage; coding of messages; data conversion of computer programs and data [not physical conversion]; cross-platform conversion of digital content into other forms of digital content; encryption of digital images; encryption of digital music; encryption, decryption and authentication of information, messages and data; copying of computer software; data duplication and conversion services, data coding services; advice relating to the design of computer hardware; consultancy in the design and development of computer hardware; advisory services relating to computer hardware design; design and development of computer hardware; design and development of computer hardware architecture; computer design research; research in the field of computer hardware; research relating to the development of computer hardware; research and development services relating to computer hardware; design of computer hardware; testing of computer hardware; computer hardware development; updating of computer software; updating internet pages; updating and adapting of computer programs according to user requirements; computer software design and updating; updating and maintenance of computer software and programs; updating of computer programs; updating and upgrading of computer software; updating of computer software for others; updating of computer programs for third parties; updating of computer software relating to computer security and prevention of computer risks; updating of home pages for computer networks; updating home pages for others; updating of software for data processing; updating of software data bases; analytical services relating to computer programmes; commissioned writing of computer programs, software and code for the creation of web pages on the internet; website usability testing services; advisory services in the field of product development and quality improvement of software; consultancy in the field of software design; consultancy with regard to webpage design; application system testing consultancy; advice and development services relating to computer software; advisory services relating to computer software used for printing; advisory services relating to computer software used for publishing; advisory services relating to the use of computer software; advisory services relating to computer software design; consultancy services relating to computer programming; consultancy relating to the design and development of computer software programs; consultancy relating to the design of home pages and internet sites; consultancy relating to the creation and design of websites; consultancy relating to the creation and design of websites for e-commerce; consultancy relating to computer database programs; providing information in the field of computer software development; providing information in the field of computer software design; providing information, advice and consultancy services in the field of computer software; design of computer databases; computer programming for the internet; computer programming for telecommunications; computer programming and software design; computer programming and maintenance of computer programs; computer programming for data processing; computer software development for others; computer software consultancy; installation and maintenance of computer programs; computer software programming services; maintenance of computer programs; design of homepages and websites; computer software design; design of computers for others; design of information systems relating to management; design, maintenance and up-dating of computer software; design, maintenance, rental and updating of computer software; design services for computer programs; services for the writing of computer programs; services for the writing of computer software; services for the design of electronic data processing software; project studies relating to software; feasibility study services relating to computer software; conducting feasibility studies relating to computer software; design, drawing and commissioned writing of computer software; development and creation of computer programmes for data processing; developing and updating computer software; development and maintenance of computer database software; development and maintenance of computer software; development of computer software application solutions; development, design and updating of home pages; development of computer programs; development of computer software for logistics, supply chain management and e-business portals; development of computer software for use with computer-controlled switching systems; development of computer software for use with programmable controllers; development of data bases; development of data programs; development of data processing programs by order of third parties; constructing an internet platform for electronic commerce; development of programmes for data processing; development of software for secure network operations; development of softwarefor digital signal processing; development of virtual reality software; development of software solutions for internet providers and internet users; developing of driver and operating system software; website development services; design and updating of home pages and web pages; design and development of operating software for accessing and using a cloud computing network; design and development of computer software for logistics, supply chain management and e-business portals; design and development of computer software for process control; design and development of software for database management; design and development of homepages and websites; design and development of internet security programs; designing and developing webpages on the internet; design and development of virtual reality software; design, development and implementation of software; design, development and programming of computer software; intranet design, development and maintenance; design, creation, hosting and maintenance of internet sites for third parties; design and development of operating software for computer networks and servers; design and development of computer software for reading, transmitting and organising data; design and development of computer software for evaluation and calculation of data; design and development of data output systems; design and development of software for importing and managing data; design and development of software for website development; design and development of software for inventory management; design and construction of homepages and websites; design and creation of homepages and internet pages; design and maintenance of computer sites for third parties; creating and maintaining websites; designing of data processing programmes; design of information systems; web portal design; design, maintenance, development and updating of computer software; research and development of computer software; creating and updating of home pages for computer networks; software design for others; creating home pages for others; preparation of data processing programmes; computer programming for others; creation, updating and adapting of computer programs; provision of technical studies relating to computer programming; writing and updating computer software; creating and maintaining customized web pages; creating and maintaining computer sites (web sites) for others; building and maintaining websites; creation and provision of web pages to and for third parties; creating, maintaining and hosting the websites of others; creation of computer programmes for data processing; writing of computer programs; creation of internet web sites; writing of programs for data processing; creating web pages for others; creating electronically stored web pages for online services and the internet; creation, maintenance and adaptation of software; provision of information relating to computer programs; provision of information relating to computer programming; professional consultancy services relating to computer programming; professional advisory services relating to computer software; debugging computer software for others; troubleshooting of computer software problems; diagnosis of faults in computer software; research relating to computer programming; research relating to computer programs; research relating to the development of computer programs and software; computer software research; research in the field of computer programs and software; research and consultancy services relating to computer software; research relating to the development of computer software; creation, design, development and maintenance of web sites for third parties; web site design and creation services; design and creation of homepages and web pages; design and creation of web sites for others; designing and implementing network web pages for others; designing and implementing web sites for others; creating and maintaining blogs for others; creating and designing web pages for others; creating and maintaining web sites for others; creating of computer programs; design of home pages; creating of home pages for computer networks; internet web site design services; design of web pages; designing websites for advertising purposes; creating, designing and maintaining web sites; creating, maintaining, and modernizing computer software; implementation of computer programs in networks; advisory and information services relating to computer software; engineering services for applications on large and medium-sized computer systems; engineering services relating to computer programming; installation and actualisation of programs for data processing; installation, maintenance and updating of computer software; installation, setting up and maintenance of computer software; installation, maintenance, repair and servicing of computer software; installation, repair and maintenance of computer software; installation and maintenance of database software; installation and maintenance of internet access software; installation and customisation of computer applications software; installing computer programs; installation of database software; installation of firmware; installation of internet access software; installing web pages on the internet for others; configuration of computer systems and networks; configuration of computer software; configuration of computer firmware; compilation of data-processing programs; installation, maintenance and updating of database software; installation, maintenance and repair of software for computer systems; installation, maintenance, updating and upgrading of computer software; installation of software; computer systems integration services; calibration services relating to computer software; design and creating web sites for others; design and maintenance of web sites for others; design and writing of computer software; computer website design; homepage and webpage design; design of software for audio and video operators; design of software for multimedia data storing and recalling; design of software for compression and decompression of multimedia contents; design of software for data and multimedia content conversion from and to different protocols; design of software for processing and distribution of multimedia contents; duplicating computer programs; custom design of software packages; software customisation services; modifying of computer programs; maintenance of computer software relating to computer security and prevention of computer risks; maintenance of data bases; maintenance of computer records; programming of operating software for computer networks and servers; programming of operating software for accessing and using a cloud computing network; programming of computer software for reading, transmitting and organising data; programming of software for database management; programming of software for importing and managing data; programming of software for internet portals, chatrooms, chat lines and internet forums; programming of customized web pages; computer programming; programming of computers for the regulation of data between buyers and suppliers; programming of computers for the printing of bar codes; programming of computer software for electronic language translation dictionaries and databases; programming of computer software for evaluation and calculation of data; computer programming for data processing and communication systems; programming of data processing equipment; programming of energy management software; programming of internet security programs; programming of software for e-commerce platforms; programming of software for information platforms on the internet; programming of software for internet platforms; programming of software for website development; programming of edp software; programming of web pages; testing of computer programs; research, development, design and upgrading of computer software; repair of software [maintenance, updating]; repair of computer software; repair of damaged computer programs; writing of computer software; writing of control programs; software design and development; software engineering; software engineering services for data processing programs; software development; software creation; technical consultancy services relating to computer programming; computer software technical support services; technological advisory services relating to computer programs; testing of computer software; support and maintenance services for computer software; upgrading of computer software; hiring of computer firmware; managing the web sites of others; maintenance and updating of computer software; maintenance and updating of software for communication systems; maintenance and upgrading of computer software; maintenance and repair of software; maintenance of software; maintenance of computer software used for operating filling apparatus and machines; maintenance of software for internet access; website development for others; website design; editing of computer programs; compilation of web pages for the internet.
An interpretation of the wording of the lists 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 and in the applicant’s lists of goods and services, indicate 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, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
On the other hand, the term ‘namely’, used in the opponent’s and 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.
As a preliminary remark, it should also be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.
Contested goods in Class 9
The contested computer software adapted for use in the operation of computers; network access server operating software; computer operating programs; operating system programs; computer operating programs, recorded; operating computer software for main frame computers; communications processing computer software; embedded operating software; operating and user instructions stored in digital form for computers and computer software, in particular on floppy disks or cd-rom; computer operating systems; firmware for computer peripherals; firmware; computer antivirus software; application software; application software for cloud computing services; application software for social networking services via internet; computer software downloaded from the internet; vpn [virtual private network] operating software; computer application software; computer utility programs [program performs computer maintenance work]; computer programs [downloadable software]; computer communication software to allow customers to access bank account information and transact bank business; computer programs for project management; computer programmes for use in telecommunications; computer programs for connecting remotely to computers or computer networks; computer programs for accessing and using the internet; computer programs for using the internet and the worldwide web; computer programmes relating to local area networks; computer programs for the enabling of access or entrance control; computer software in the field of electronic publishing; computer software for document management; computer software for database management; computer software for business purposes; computer software for advertising; computer software for accessing information directories that may be downloaded from the global computer network; computer e-commerce software; computer software for processing market information; computer software designed to estimate resource requirements; computer software for communication between computers over a local network; computer software for administration of local area networks; computer software for computer aided software engineering; computer software for analysing market information; computer software for application and database integration; computer software to automate data warehousing; computer software for use in providing multiple user access to a global computer information network; computer software to enable the searching of data; computer software for creating dynamic websites; computer software for use in creating and designing websites; computer software for the creation of firewalls; computer software for creating searchable databases of information and data; computer software for authorising access to data bases; computer software for controlling and managing access server applications; computer software that assists computers in deploying parallel applications and performing parallel computations; computer software for encryption; computer software for use in migrating between different computer network operating systems; computer software for use in remote meter reading; computer software for use in computer access control; computer software for time control; computer software platforms; computer software programs for spreadsheet management; data communications software; data processing programs; computer programmes for data processing; digital telephone platforms and software; printer programmes; decoder software; computer software development tools; computer firewall software; freeware; recorded computer programs; recorded computer software; computer groupware; downloadable software; downloadable computer security software; downloadable computer software for remote monitoring and analysis; computer programmes stored in digital form; interactive computer software; communication software; communication software for connecting computer network users; communication software for connecting global computer networks; lan [local area network] operating software; monitors [computer programs]; computer programs for network management; network operating system programs; personal computer application software for document control systems; personal computer application software for managing document control systems; printer spooler software; programs for computers; process controlling software; computer telephony software; computer software for biometric systems for the identification and authentication of persons; software for the operational management of portable magnetic and electronic cards; financial management software; software for debt recovery; software for commerce over a global communications network; internet access software; computer software applications, downloadable; desktop publishing software; software for diagnostics and troubleshooting; software for online messaging; data compression software; graphical user interface software; community software; privacy protection software; website development software; control segment integration software; software to control building environmental, access and security systems; computer software to maintain and operate computer system; software for ensuring the security of electronic mail; software for searching and retrieving information across a computer network; software development kit [sdk]; cartridges [software] for use with computers; interfaces for computers; computer software packages; controlling software for computer printers; wan [wide area network] operating software; software are all included in, or overlap to a considerable extent with, the broad categories of the opponent’s computer software, computer programs. Therefore, they are identical.
The contested computer databases; databases (electronic) overlap with the broad categories of the opponent’s computer software to enable searching of data; encoded programs for computers and for data processing and telecommunications; data carriers. These sets of goods cannot be clearly separated and are, therefore, considered identical.
The contested recorded data files; data recorded electronically; magnetic recordings; recorded data [magnetic]; recorded content; directories [electric or electronic] include, as broader categories, the opponent’s recorded programmes for broadcasting or other transmission on television, radio, mobile telephones, PDAs and on PCs; video recordings. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested artificial intelligence apparatus; computerised personal organisers; data exit terminals; data exchange units; data entry terminals; data terminals; data conversion apparatus; data processing equipment; data processing terminals; data processing apparatus; data processing systems; real-time data processing apparatus; electronic data processing equipment; programming units (electric -); programming units (electronic -); electronic calculators; computer interface apparatus are all identical to the opponent’s computers; apparatus for recording, transmission, reproduction or reception of sound, images or audio visual content, because the opponent’s goods include, are included in, or overlap with, the aforementioned contested goods.
The contested pre-programmed discs cannot be clearly separated from the opponent’s discs, all pre-recorded with computer video games and/or quizzes. Therefore, as these goods overlap, they are considered identical.
The contested magnetic tapes for memorising software programs are included in the broad category of the opponent’s tapes, all being magnetic. Therefore, they are identical.
The contested magnetic supports for software cannot be clearly separated from the opponent’s tapes and discs, all being magnetic, as the latter may also perform supporting functions as regards computer software. Therefore, these goods overlap and are considered identical.
Contested services in Class 38
The contested telecommunication services are identically covered by the opponent’s mark.
The contested computer communication and internet access; consultancy in the field of telecommunications; consultancy services relating to data communications; electronic communications consultancy; information, consultancy and advisory services relating to telecommunications; communication network consultancy; advisory services relating to communications equipment; consulting services in the field of electronic communications; providing access to telecommunication networks; providing access to electronic communications networks and electronic databases; providing high speed access to computer and communication networks; provision of communications facilities for interchange of electronic data; providing electronic telecommunication connections; remote transmission of data by means of telecommunications; transfer of data by telecommunications; data transmission; data communication by electronic means; transmission of data by laser beam; data transmission for others; data transmission and reception services via telecommunication means; high bit-rate data transmission services for telecommunication network operators; data transmission services over telecommunications networks; digital transmission of data; digital communications services; digital transmission of data via the internet; digital transmission services for audio and video data; digital transmission services; providing video conferencing services; communication of information by electronic means; electronic communications services; communication services for the electronic transmission of data; electronic transmission of voices (services for the -); electronic transmission of instant messages and data; electronic and telecommunication transmission services; electronic transmission and retransmission of sounds, images, documents, messages and data; electronic transmission of images (services for the -); electronic transmission of documents (services for the -); electronic transmission of information (services for the -); electronic transmission of messages and data; transmission of written communications (electronic -); professional consultancy relating to telecommunications; optical fibre telecommunications services; secured data, sound and image transmission services; information and advisory services relating to telecommunication services; transmission of information via national and international networks; transmission of information by data communications for assisting decision making; interactive communication services; interactive telecommunications services; interactive broadcasting and communications services; cable transmission of sounds, images, signals and data; communication by hertzian wave; communication services provided electronically; communications services for the exchange of data in electronic form; communication services for the electronic transmission of images; communication services for the electronic transmission of voices; communication services for the transmission of information; communication services for the transmission of information by electronic means; communication services by cable; electronic network communications; communications via multinational telecommunication networks; communication by electronic means; telecommunications routing and junction services; value added network [communication] services; network conferencing services; network transmission of sounds, images, signals and data; on-line information services relating to telecommunications; message services; message sending services; transmission of messages and images; message collection and transmission services; message sending, receiving and forwarding; sending [transmission] of news; secure transmission of data, sound or images; signal transmission for electronic commerce via telecommunication systems and data communication systems; voice and data transmission services; telecommunications consultancy; information services relating to electronic communication networks; operation of a telecommunications network; operation of telecommunications systems; operation of wide-band telecommunications networks; operating of electronic communications networks; operating of electronic communications systems; telecommunications services, namely, personal communication services; message sending and receiving services; telecommunications services to obtain information from data banks; telecommunications services for the distribution of data; digital network telecommunications services; telecommunications services between computer networks; telecommunications services provided by means of optical fibre networks; teleconferencing and video conferencing services; transmission of sound by electronic means; transmission of sound via interactive multimedia networks; data communication services accessible by password; data communication services accessible by access code; telecommunications services provided via fiber optic, wireless and cable networks; provision of reports relating to communications; transmission of data, messages and information; message sending; transmission of messages, data and content via the internet and other communications networks; delivery of digital audio and/or video by telecommunications; transmission and reception [transmission] of database information via the telecommunication network; transmission of encrypted communications; communication of data by means of telecommunications; transmission of database information via telecommunications networks; transmission of despatches by electronic means; transmission of information for business purposes; transmission of information for domestic purposes; transmission of information in the audiovisual field; transmission of information through video communication systems; information transmission services via digital networks; transmission of information by electronic communications networks; transmission of information on optical telecommunication networks; transmission of short messages; transmission of short messages [sms], images, speech, sound, music and text communications between mobile telecommunications devices; providing facilities and equipment for video conferencing; provision of communications facilities for the interchange of digital data; video communication services; videoconferencing; video transmission via digital networks; video transmission services; telecommunications access services; delivery of messages by electronic media; transmission of sound, video and information; transmission of sound or visual recordings over networks; transmission of coded messages and images are included in the broad category of the opponent’s telecommunications services. Therefore, they are identical.
Contested services in Class 42
The contested computer technology consultancy; telecommunications technology consultancy; technical design and planning of telecommunications networks; quality control relating to computer systems; quality control relating to computer software; testing, authentication and quality control; IT services; updating of memory banks of computer systems; updating websites for others; analytical services relating to computers; advisory and information services relating to computer peripherals; providing information about the design and development of computer software, systems and networks; computer project management in the field of EDP; computer rental and updating of computer software; computer diagnostic services; computerised analysis of data; computer system analysis; development of computer systems; data migration services; computer design and programming services; diagnosing computer hardware problems using software; computer network services; computer analysis; development of systems for the storage of data; development of systems for the processing of data; development of systems for the transmission of data; development of computer based networks; design and development of data processing systems; design and development of electronic database software; design and development of data storage systems; design and development of systems for data input, output, processing, display and storage; design, creation and programming of web pages; designing, managing and monitoring online forums for discussion; preparation of computer programs for data processing; troubleshooting of computer hardware and software problems; monitoring of computer systems by remote access; research relating to computers; research relating to data processing; research relating to the computerised automation of administrative processes; research relating to telecommunication techniques; research in the field of information technology; research in the field of data processing technology; integration of computer systems and networks; computer network configuration services; customization of computer hardware and software; computer project management services; outsource service providers in the field of information technology; server administration; technical research relating to computers; technological services relating to computers; technological research relating to computers; comparative analysis studies of the efficiency of computer systems; comparative analysis studies of the performance of computer systems; rental and maintenance of computer software; rental of computer hardware and computer software; administration of user rights in computer networks; data decryption services; data encryption services; services for reproducing computer programs; data encryption and decoding services; digital compression of computer data; compression of data for electronic storage; coding of messages; data conversion of computer programs and data [not physical conversion]; cross-platform conversion of digital content into other forms of digital content; encryption of digital images; encryption of digital music; encryption, decryption and authentication of information, messages and data; copying of computer software; data duplication and conversion services, data coding services; advice relating to the design of computer hardware; consultancy in the design and development of computer hardware; advisory services relating to computer hardware design; design and development of computer hardware; design and development of computer hardware architecture; computer design research; research in the field of computer hardware; research relating to the development of computer hardware; research and development services relating to computer hardware; design of computer hardware; testing of computer hardware; computer hardware development; updating of computer software; updating internet pages; updating and adapting of computer programs according to user requirements; computer software design and updating; updating and maintenance of computer software and programs; updating of computer programs; updating and upgrading of computer software; updating of computer software for others; updating of computer programs for third parties; updating of computer software relating to computer security and prevention of computer risks; updating of home pages for computer networks; updating home pages for others; updating of software for data processing; updating of software data bases; analytical services relating to computer programmes; commissioned writing of computer programs, software and code for the creation of web pages on the internet; website usability testing services; advisory services in the field of product development and quality improvement of software; consultancy in the field of software design; consultancy with regard to webpage design; application system testing consultancy; advice and development services relating to computer software; advisory services relating to computer software used for printing; advisory services relating to computer software used for publishing; advisory services relating to the use of computer software; advisory services relating to computer software design; consultancy services relating to computer programming; consultancy relating to the design and development of computer software programs; consultancy relating to the design of home pages and internet sites; consultancy relating to the creation and design of websites; consultancy relating to the creation and design of websites for e-commerce; consultancy relating to computer database programs; providing information in the field of computer software development; providing information in the field of computer software design; providing information, advice and consultancy services in the field of computer software; design of computer databases; computer programming for the internet; computer programming for telecommunications; computer programming and software design; computer programming and maintenance of computer programs; computer programming for data processing; computer software development for others; computer software consultancy; installation and maintenance of computer programs; computer software programming services; maintenance of computer programs; design of homepages and websites; computer software design; design of computers for others; design of information systems relating to management; design, maintenance and up-dating of computer software; design, maintenance, rental and updating of computer software; design services for computer programs; services for the writing of computer programs; services for the writing of computer software; services for the design of electronic data processing software; project studies relating to software; feasibility study services relating to computer software; conducting feasibility studies relating to computer software; design, drawing and commissioned writing of computer software; development and creation of computer programmes for data processing; developing and updating computer software; development and maintenance of computer database software; development and maintenance of computer software; development of computer software application solutions; development, design and updating of home pages; development of computer programs; development of computer software for logistics, supply chain management and e-business portals; development of computer software for use with computer-controlled switching systems; development of computer software for use with programmable controllers; development of data bases; development of data programs; development of data processing programs by order of third parties; constructing an internet platform for electronic commerce; development of programmes for data processing; development of software for secure network operations; development of software for digital signal processing; development of virtual reality software; development of software solutions for internet providers and internet users; developing of driver and operating system software; website development services; design and updating of home pages and web pages; design and development of operating software for accessing and using a cloud computing network; design and development of computer software for logistics, supply chain management and e-business portals; design and development of computer software for process control; design and development of software for database management; design and development of homepages and websites; design and development of internet security programs; designing and developing webpages on the internet; design and development of virtual reality software; design, development and implementation of software; design, development and programming of computer software; intranet design, development and maintenance; design, creation, hosting and maintenance of internet sites for third parties; design and development of operating software for computer networks and servers; design and development of computer software for reading, transmitting and organising data; design and development of computer software for evaluation and calculation of data; design and development of data output systems; design and development of software for importing and managing data; design and development of software for website development; design and development of software for inventory management; design and construction of homepages and websites; design and creation of homepages and internet pages; design and maintenance of computer sites for third parties; creating and maintaining websites; designing of data processing programmes; design of information systems; web portal design; design, maintenance, development and updating of computer software; research and development of computer software; creating and updating of home pages for computer networks; software design for others; creating home pages for others; preparation of data processing programmes; computer programming for others; creation, updating and adapting of computer programs; provision of technical studies relating to computer programming; writing and updating computer software; creating and maintaining customized web pages; creating and maintaining computer sites (web sites) for others; building and maintaining websites; creation and provision of web pages to and for third parties; creating, maintaining and hosting the websites of others; creation of computer programmes for data processing; writing of computer programs; creation of internet web sites; writing of programs for data processing; creating web pages for others; creating electronically stored web pages for online services and the internet; creation, maintenance and adaptation of software; provision of information relating to computer programs; provision of information relating to computer programming; professional consultancy services relating to computer programming; professional advisory services relating to computer software; debugging computer software for others; troubleshooting of computer software problems; diagnosis of faults in computer software; research relating to computer programming; research relating to computer programs; research relating to the development of computer programs and software; computer software research; research in the field of computer programs and software; research and consultancy services relating to computer software; research relating to the development of computer software; creation, design, development and maintenance of web sites for third parties; web site design and creation services; design and creation of homepages and web pages; design and creation of web sites for others; designing and implementing network web pages for others; designing and implementing web sites for others; creating and maintaining blogs for others; creating and designing web pages for others; creating and maintaining web sites for others; creating of computer programs; design of home pages; creating of home pages for computer networks; internet web site design services; design of web pages; designing websites for advertising purposes; creating, designing and maintaining web sites; creating, maintaining, and modernizing computer software; implementation of computer programs in networks; advisory and information services relating to computer software; engineering services for applications on large and medium-sized computer systems; engineering services relating to computer programming; installation and actualisation of programs for data processing; installation, maintenance and updating of computer software; installation, setting up and maintenance of computer software; installation, maintenance, repair and servicing of computer software; installation, repair and maintenance of computer software; installation and maintenance of database software; installation and maintenance of internet access software; installation and customisation of computer applications software; installing computer programs; installation of database software; installation of firmware; installation of internet access software; installing web pages on the internet for others; configuration of computer systems and networks; configuration of computer software; configuration of computer firmware; compilation of data-processing programs; installation, maintenance and updating of database software; installation, maintenance and repair of software for computer systems; installation, maintenance, updating and upgrading of computer software; installation of software; computer systems integration services; calibration services relating to computer software; design and creating web sites for others; design and maintenance of web sites for others; design and writing of computer software; computer website design; homepage and webpage design; design of software for audio and video operators; design of software for multimedia data storing and recalling; design of software for compression and decompression of multimedia contents; design of software for data and multimedia content conversion from and to different protocols; design of software for processing and distribution of multimedia contents; duplicating computer programs; custom design of software packages; software customisation services; modifying of computer programs; maintenance of computer software relating to computer security and prevention of computer risks; maintenance of data bases; maintenance of computer records; programming of operating software for computer networks and servers; programming of operating software for accessing and using a cloud computing network; programming of computer software for reading, transmitting and organising data; programming of software for database management; programming of software for importing and managing data; programming of software for internet portals, chatrooms, chat lines and internet forums; programming of customized web pages; computer programming; programming of computers for the regulation of data between buyers and suppliers; programming of computers for the printing of bar codes; programming of computer software for electronic language translation dictionaries and databases; programming of computer software for evaluation and calculation of data; computer programming for data processing and communication systems; programming of data processing equipment; programming of energy management software; programming of internet security programs; programming of software for e-commerce platforms; programming of software for information platforms on the internet; programming of software for internet platforms; programming of software for website development; programming of EDP software; programming of web pages; testing of computer programs; research, development, design and upgrading of computer software; repair of software [maintenance, updating]; repair of computer software; repair of damaged computer programs; writing of computer software; writing of control programs; software design and development; software engineering; software engineering services for data processing programs; software development; software creation; technical consultancy services relating to computer programming; computer software technical support services; technological advisory services relating to computer programs; testing of computer software; support and maintenance services for computer software; upgrading of computer software; hiring of computer firmware; managing the web sites of others; maintenance and updating of computer software; maintenance and updating of software for communication systems; maintenance and upgrading of computer software; maintenance and repair of software; maintenance of software; maintenance of computer software used for operating filling apparatus and machines; maintenance of software for internet access; website development for others; website design; editing of computer programs; compilation of web pages for the internet consist of a vast array of specialised IT services, related to hardware and/or software, to the design, development, installation and maintenance of software, hardware, computer systems, to computer programming and websites/webpages, to information, advisory and consultancy services provided in relation to these IT services, etc. Therefore, these services are considered at least similar to the opponent’s design and development of computer hardware and software; design, drawing and commissioned writing all for the compilation of web pages on the Internet; hosting websites; creating and maintaining websites; computer services for interactive communications and broadcasting; installation, rental and maintenance of computer software; home computer services namely computer consultancy, installation, repair and maintenance of computer software, updating software and computer support services; computer services, namely the organisation of an infrastructure to enable television subscribers to access internet services via the television; advisory services relating to computer hardware or software; design, installation, maintenance or updating of computer software; design of computer hardware; computer programming services; computer services for on-line shopping; computer services relating to the processing of orders and payments; weather forecasting; internet walled garden services; operation of search engines; design services; designing electrical or electronic systems; rental or leasing of computer hardware or software; testing, research, assessing, consultancy, advising or providing information in relation to the foregoing, because the latter also comprise numerous IT and technological services, as well as the corresponding design, development, maintenance, support, advisory and consultancy services related to them.
The contested rental of calculators is considered similar to the opponent’s rental or leasing of computer hardware. These services coincide in their nature and, at least partially, in their purpose. Furthermore, they normally target the same consumers, via the same channels and may be provided by the same undertakings.
The contested monitoring of telecommunication signals; monitoring of audio warning signals are considered similar to the opponent’s monitoring and analysis of call information; testing, research, assessing, consultancy, advising or providing information in relation to the foregoing. These services have the same nature and may be provided by the same undertakings, to the same users and through the same commercial channels.
The contested science and technology services consist of broad categories of services, which may be applied to several technical and scientific areas. They promote the research and development of technologies and resources in the scientific, technological and/or industrial fields. These activities are aimed at the acquisition of new knowledge with the objective of using it for developing new products, processes or services or for bringing about a significant improvement in existing products, processes or services. Therefore, they have relevant links with the opponent’s design services; design and development of computer hardware and software; providing information and advice with regard to environmental protection, energy conservation and alternative energy sources, ecology and animal welfare as well as conducting research and drawing up expert reports in the aforementioned fields; research and development of durable use of nature and the environment; technical assistance concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare and effecting such projects; development and testing for renewable energy sources including wind power, hydroelectric power, tidal power, geothermal power, solar power, biomass, and biofuels, and components therefor; effecting research projects concerning environmental protection, energy conservation and alternative energy sources, ecology and animal welfare; consultancy, information and advisory services relating to all the aforesaid services; information relating to all the aforementioned services provided on-line from a computer database or via the Internet in Class 42.
These services partly coincide in their technological nature since, for instance, the opponent’s design services or design and development of computer hardware and software may be specifically applied to numerous fields of application and market sectors (such as the ones in which the contested services are rendered); in addition, the broad categories of the contested services indicate that they comprise services which may be applied in several areas, such as the scientific, technological and research services as regards environmental protection, energy conservation and alternative energy sources, ecology, etc. Therefore, these services may be offered by the same companies and together as part of a broader service ordered by the same customer. The same service provider may conduct industrial analysis and research and, based on this, the provider may design and develop computer hardware and software for customers’ needs. The services may, therefore, be provided to the same customer. Consequently, they are considered similar.
- 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 business customers with specific professional knowledge or expertise. The relevant public’s level of attention will vary from average to high, depending on the price, the specific nature, the terms and conditions and the frequency of purchase of these goods and services.
- The signs
|
SKY
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SKYWAY
|
|
Earlier trade mark |
Contested sign |
The relevant territory is the United Kingdom.
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).
Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lower case characters. The earlier sign consists of the verbal element ‘SKY’ and the contested sign of the verbal element ‘SKYWAY’.
It must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
The conjoined expression ‘SKYWAY’, considered as such, will be perceived as, inter alia, ‘a recognized route which aircrafts follow’, ‘a raised motorway’ or ‘a covered overhead walkway between two buildings’ (Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/skyway). Nonetheless, it must also be noted that the English-speaking public at issue is fully aware that the semantic content of this expression comes precisely from the two terms of which it is composed: a ‘way’ (passage/path/route) in the ‘sky’ (raised in the air). This is also reinforced by the fact that the pronunciation of the conjoined expression ‘SKYWAY’ splits it in two syllables (‘SKY’ and ‘WAY’), which correspond precisely to the two notions which the combined term comprises. Consequently, the term may also be perceived as referring abstractly to a ‘way/path/route in the sky’. Therefore, considering the aforementioned principles, it is reasonable to conclude that the relevant consumers will instantly perceive the verbal element ‘SKYWAY’ of the contested sign as being composed by the meaningful elements ‘sky’ and ‘way’, because they are both words known to them.
The word ‘SKY’, contained in both signs, will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of divine power; heaven’ (Collins English Dictionary online, at http://www.collinsdictionary.com/dictionary/english/sky). This word is neither descriptive nor lacking distinctiveness for any of the relevant goods and services in Classes 9, 38 and 42. It does not describe or even allude to any of their essential characteristics. The same conclusion is applicable to the contested sign considered as a whole: whether perceived as referring abstractly to ‘a way in the sky’ or to a more specific notion (among the specific meanings of the term mentioned above), the sign conveys no descriptive or even allusive information in relation to the relevant goods and services.
Therefore, the marks under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the word ‘SKY’, which constitutes the earlier mark, is reproduced in and plays a distinctive role at the beginning of the contested sign. The signs differ in the additional word of the contested sign, ‘WAY’.
As mentioned above, the public in the relevant territory will not fail to perceive ‘SKY’ as an element in the contested sign, recognising the meanings of the conjoined words ‘SKY’ and ‘WAY’, even considering that the combination of these elements generates a specific notion. Therefore, the beginning of the contested sign coincides with the earlier mark. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.
Therefore, considering the coincidence in the distinctive element ‘Sky’, the marks are visually similar to an average degree.
Aurally, the contested sign will be pronounced in two parts, corresponding to the two words of which its verbal element is composed: ‘SKY’ and ‘WAY’. Therefore, the first part, ‘SKY’, is aurally identical to the earlier sign. The signs differ in the sound of the second element of the contested sign, ‘WAY’. Overall, considering the above-mentioned principles and the importance of the coincidence in their initial element, it is concluded that there is a medium degree of aural similarity between the marks.
Conceptually, the public in the relevant territory will perceive the word ‘SKY’ contained in both signs, in accordance with the meanings referred above. As regards the contested sign as a whole, as explained above, it may be perceived as referring abstractly to ‘a way/path in the sky’ or it may be associated with a more specific notion (among the specific meanings of the term ‘skyway’ mentioned above). In both cases, the public will be aware of the semantic content of the word ‘SKY’ (which contributes decisively to the meaning of the conjoined expression and which is inherently distinctive in relation to the goods and services at issue) when perceiving the contested sign as a whole and this coincidence generates a certain conceptual similarity between the marks.
The conceptual similarity is of an average degree for the consumers that will associate the contested sign with the abstract notion of a ‘way/path in the sky’ and of a low degree for the consumers that will perceive it as referring to one of the particular notions mentioned above.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier 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 has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning in relation to 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.
- Global assessment, other arguments and conclusion
The contested goods and services are identical or similar to the goods and services covered by earlier United Kingdom trade mark No 2 500 604.
The signs under comparison are visually, aurally and conceptually similar, on account of the common element ‘SKY’, which constitutes the earlier mark and is fully included, yet clearly perceptible, in the beginning of the contested sign, ‘SKYWAY’. The signs differ in the additional word, ‘WAY’, of the contested mark.
In word signs, the first part is usually the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that, in general, the beginning of a sign has a significant influence on the overall impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; and judgment of 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30).
This principle is fully applicable to the present case. The signs are both word marks and the entire earlier mark, ‘SKY’, is contained, as a distinguishable element, in the first part of the contested sign. Therefore, this has to be taken into account when assessing the likelihood of confusion between the marks, because it will have a significant impact on the overall impression made by the contested sign.
This conclusion is valid even in relation to the public which will associate the contested sign with a particular notion, such as ‘a recognized route which aircrafts follow’, ‘a raised motorway’ or ‘a covered overhead walkway between two buildings’. Indeed, English-speaking consumers will not fail to comprehend that the reference in the notions in question derives precisely from the sum of the parts of the conjoined expression at issue, ‘SKYWAY’ (i.e., a path/passage/route in the sky). While it is true that in this case the conceptual similarity between the signs is lower, the Opposition Division does not share the applicant’s view that the signs are conceptually dissimilar. The presence of the initial word ‘sky’ and the sense that it gives to the expression as a whole will still determine a degree of conceptual similarity between the marks, even if a low one.
It is also important to note that the coinciding meaningful element ‘SKY’ is considered distinctive to an average degree in relation to all the relevant goods and services, i.e., the earlier mark enjoys an average inherent distinctiveness.
Therefore, given the reproduction of the distinctive element ‘SKY’ in the contested sign, it is likely that the relevant public will, at least, associate the contested sign with the earlier mark.
Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested trade mark, ‘SKYWAY’, is a new brand line or a recent development under the opponent’s mark, considering that it will be applied to goods and services which are identical or similar to those marketed under the ‘SKY’ brand. In other words, consumers may confuse the origins of the goods and services at issue by assuming that they come from the same undertaking or from economically-linked undertakings.
Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding element, ‘SKY’, and that, for identical and similar goods and services, there is a likelihood of confusion, including a likelihood of association, on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods and services.
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 extensive use and 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 United Kingdom trade mark registration No 2 500 604 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights 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 8(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
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Monica CISZEWSKA
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Gueorgui IVANOV
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Michaela SIMANDLOVA
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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.