OPPOSITION No B 2 728 312

GK Software AG, Waldstr. 7, 08261 Schöneck, Germany (opponent), represented by Zenz Patentanwälte Partnerschaft mbB, Rüttenscheider Str. 2, 45128 Essen, Germany (professional representative)

a g a i n s t

GK4 LTD, Tal-Bonzu, Triq L-Imghazel, Swieqi 3141, Malta (applicant).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 728 312 is partially upheld, namely for the following contested goods:

Class 9: Recorded content; security, protection and signalling devices; information technology and audiovisual equipment; optical devices, enhancers and correctors; navigation, guidance, tracking, targeting devices; devices for treatment using electricity; educational apparatus and simulators, indicators and controllers; apparatus, instruments and cables for electricity; telephone apparatus; speakerphones; cell phones; radiotelephones; internet phones; digital phones; car telephones; satellite telephones; VOIP phones; fixed location telephones; TV sets; LED televisions; HD (High Definition) televisions.

2.        European Union trade mark application No 15 226 004 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs        

 

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 226 004, namely against all the goods in Class 9. The opposition is based on international trade mark registrations No 1 028 620 and No 1 077 646, both designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods

The goods on which the opposition is based are:

No 1: From earlier international trade mark registration No 1 028 620

Class 9: Computer software (recorded, downloadable); indicators (electricity); computer; calculating machines; computer peripheral devices; data processing apparatus, portable data processing apparatus; cash registers; scanner (data processing equipment); portable scanner (data processing equipment); word processors; image and sound receiving devices; sound and image recording, transmitting and reproduction apparatus; portable sound and image recording, transmitting and reproduction apparatus; automatic distribution machines and mechanisms for money-actuated apparatus; encoded service cards and identity cards.

Class 36: Execution of money transactions; processing, controlling and management of loyalty and discount campaigns and (electronic) tokens of value; issue of tokens of value; financial transactions; transmission of payment; transactions via data; communication networks and mobile communication networks; cash balance and safe balance administration; financial management of current accounts.

Class 42: Updating of computer software; electronic data saving; electronic data storage; installation and maintenance of software; configuration of computer networks using software; managing computer networks; configuration and monitoring of computer networks and computer systems; data preparation and data visualisation; data distribution via a computer network; certification agency services (trust centres), namely issuance and management of digital content, codes and/or digital signatures; computer program design for data processing; checking of digital signatures; rental of computer software; computer rental; maintenance of computer software; certification services

No 2: From earlier international trade mark registration No 1 077 646

Class 9: Computer software (recorded, downloadable); indicators (electricity); computers; calculating machines; computer peripheral devices; data processing apparatus, portable data processing apparatus; cash registers; scanners (data processing equipment); portable scanners (data processing equipment); word processors; image and sound receiving devices; sound and image recording, transmitting and reproduction apparatus; portable sound and image recording, transmitting and reproduction apparatus.

Class 35: Updating and maintenance of data in computer databases; planning and monitoring of business developments with regard to organisational matters; administrative processing of purchase orders; compilation of information into computer databases; direct marketing via computer networks and mobile communication networks; systematization of information into computer databases.

Class 36: Handling monetary transactions; handling loyalty and discount campaigns by issuing (electronic) tokens of value; issue of tokens of value; financial transactions; execution of payment transactions via data communication networks and mobile communication networks; cash balance and safe balance administration; client account administration.

Class 38: Providing telecommunication connections to data communication networks and database servers; forwarding messages of all types to computers or stationary or mobile telecommunication devices; providing access to databases and information in the Internet and other data communication networks; transmission of data via a computer network.

Class 42: Updating of computer software; electronic data storage; installation and maintenance of software; configuration of computer networks using software; user and right administration in computer networks; configuration and monitoring of computer networks and systems; data conversion of computer programs and data (not physical conversion); conversion of data or documents from physical to electronic media; compression of data for electronic storage; coding of data.

The contested goods are the following:

Class 9: Recorded content; Safety, security, protection and signalling devices; Information technology and audiovisual equipment; Optical devices, enhancers and correctors; Navigation, guidance, tracking, targeting and map making devices; Devices for treatment using electricity; Scientific research and laboratory apparatus, educational apparatus and simulators; Diving equipment; Measuring, detecting and monitoring instruments, indicators and controllers; Apparatus, instruments and cables for electricity; Magnets, magnetizers and demagnetizers; Telephone apparatus; Speakerphones; Cell phones; Radiotelephones; Internet phones; Digital phones; Car telephones; Satellite telephones; VOIP phones; Fixed location telephones; TV sets; LED televisions; HD (High Definition) televisions; Sport whistles

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

Contested goods in Class 9

The contested recorded content is included in the opponent´s broader category of computer software. Therefore, they are identical.

The contested security and protection devices overlap with the  the opponent’s encoded service cards and identity cards that can be used as equipment for alarm systems, e.g. cards to be used as a way of identifying one self. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested optical devices, enhancers and correctors overlap with the opponent´s sound and image recording apparatus. Therefore, they are identical.

The contested, educational apparatus and simulators are included in the opponent´s broader category of data processing apparatus. Therefore, they are identical.

The contested indicators are included in the opponent´s broader category of indicators (electricity). Therefore, they are identical.

The contested signalling devices overlap with the opponent´s broader category of indicators (electricity). Therefore, they are identical.

The contested telephone apparatus; speakerphones; cell phones; radiotelephones; internet phones; digital phones; car telephones; satellite telephones; VOIP phones; fixed location telephones; TV sets; LED televisions; HD (High Definition) televisions; are included in, or overlap with, the opponent´s broader category of sound and image transmitting and reproduction apparatus. As the Office cannot dissect ex officio the broader category of the contested goods, they are, identical to the opponent´s goods.

The contested information technology and audiovisual equipment are similar to the opponent´s data processing equipment as they share the same relevant public and same distribution channels. Moreover, they can be complementary.

The contested controllers , navigation, guidance, tracking, targeting   are similar to the opponent´s data processing apparatus as nowadays multi-media electronic apparatus combine all functionalities such as video camera, mobile phone, mobile computing platforms etc.  These goods can coincide in producers, en users and distribution channels. Furthermore, they are complementary.

The contested devices for treatment using electricity and apparatus, instruments and cables for electricity are similar to a low degree to the opponent´s indicators (electricity) as they share the same distribution channels, same relevant public. Moreover, they are complementary.

The remaining contested goods are: magnets, magnetizers and demagnetizers are used that produce magnetic field or remove magnetic properties from a material, safety devices  that include a wide range of equipment that prevent or reduce a loss or damage, map making devices are apparatus that help in the creation of maps, diving equipment that include a wide range of goods to make diving activities,  measuring, detecting and monitoring instruments that  are devices that measure and detect physical qualities, scientific research and laboratory apparatus refers to the various tools and equipment used by scientists working in a laboratory and sport whistles, that is, devices that create   a clear, high-pitched sound by forcing breath through a small hole between one's lips or teeth.

The earlier marks cover in Class 9 primarily Information Technology goods and, sound, image, transmitting and recording devices, administrative services in Class 35, financial or banking undertaking services in Class 36, specific telecommunications in Class 38 and computer software and installation services in Class 42.

All these goods and services are dissimilar because their nature, purpose and method of use are different. They also differ in their end users, distribution channels and producers/providers. Finally, they are neither in competition with each other nor complementary to each other.

2. Relevant public — degree of attention

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

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

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the purchased goods.

3. The signs

International registration No 1: Gk Software International registration No 2:
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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

In the present case, the contested sign is a figurative sign which that will  be perceived as containing the stylised Latin letters 'GK'

The common element ‘GK’ has no meaning for the relevant public and, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The English word ‘Software’ included in both the earlier marks will be associated with computer programs throughout the relevant territory due to either being the accepted term or given its widespread use. Bearing in mind that some of the relevant goods in Class 9 are software and equipment that usually operates and communicates with computers by means of programmes included in software applications, this element has to be considered either non-distinctive (for computer software (recorded, downloadable); word processors) or weak (e.g. for computer peripheral devices; data processing apparatus, cash registers; scanner (data processing equipment); image and sound receiving devices; encoded service cards and identity cards).

In the contested mark, the letter stylisation carries only a decorative function and will not draw the consumer’s attention away from the letters it is supposed to embellish. The same is true for the figurative device and stylisation of the letters in the earlier mark No 2.

None of the signs has any element that could be considered more dominant (eye catching) than others.

Visually, the signs coincide in their most distinctive element ‘GK’ albeit represented in a different manner. However, they differ in the graphic stylisation of the contested sign, performing only a decorative function in the sign, and in the additional verbal element ‘Software’ in the earlier marks which is considered non-distinctive/weak at least for a part of the relevant goods, as explained above.

Bearing in mind that the differing elements are either non-distinctive/weak or purely decorative, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the distinctive letters ‘GK’. Bearing in mind, that the differing element ‘Software’ is of limited impact for the reasons explained above, the signs are aurally similar to a high degree.

Conceptually, the earlier marks will be associated with the weak verbal element ‘Software’ and the contested sign does not carry any concept. Therefore, the signs are conceptually, not similar.

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

4. Distinctiveness of the earlier marks

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

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

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a non-distinctive/weak element, at least for a part of the goods, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22, et seq.).

The contested goods have been found to be partly identical, partly similar and partly dissimilar to those covered by the earlier marks.

The signs are visually similar to at least an average degree and aurally similar to a high degree on account of the common verbal element ‘GK’ which, in addition, is the most distinctive element of all the marks. Conceptually, the signs are not similar. Moreover, as explained above in section c) of this decision, the relevant public will understand the meaning of the additional word of the earlier sign ‘Software’ and will not pay particular attention to it because it is non-distinctive/weak in relation to a part of the goods in question.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent´s international registration No 1 028 620 designating the European Union. As regards the focus on a part of the relevant public (i.e. the part that will interpret the contested sign as the sequence of the letters ‘GK’), given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade marks.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

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

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

The Opposition Division

Martin MITURA

Alexandra APOSTOLAKIS

Ric WASLEY

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.