OPPOSITION DIVISION

OPPOSITION No B 2 782 244

Cadence Design Systems Inc., 2655 Seely Avenue, San Jose, California 95134,

United States of America (opponent), represented by Fish & Richardson P.C.,

Highlight Business Towers, Mies-van-der-Rohe-Str. 8, 80807 München, Germany

(professional representative)

a g a i n s t

Axel Springer SE, Axel-Springer-Str. 65, 10969 Berlin, Germany (applicant),

Class 9: Recorded and unrecorded sound, image and data carriers (except

unexposed films); media content; recorded content; magnetic data

carriers; compact discs, DVDs and other digital recording media;

USB flash drives; apparatus for recording, transmitting or

reproduction of sounds, images or data; apparatus for interactive

television, calculating machines; hardware; data processing

apparatus; computers; computer programs and software (recorded

and/or downloadable); electronic publications, downloadable;

downloadable sound and/or image files; apps (software), namely

applications for smartphones, tablet PCs, e-readers and other

and teaching materials (not apparatus); voucher books, unencoded

tokens and prepaid cards of cardboard and/or paper, including

coated with plastic; parts and accessories for all the aforesaid

goods, included in this class.

Class 28: Games and playthings.

Class 38: Telecommunications; Providing of access to information, text,

drawings and images on the internet; Providing of portals, blogs,

forums, chat rooms and chat lines on the internet; News agencies;

Providing of access to computer programs on data networks;

Providing user access to global computer networks; Computer

Broadcasting and retransmission of film, television, radio, BTX,

videotext, teletext and online programmes or broadcasts;

Transmission of digital image files; Message sending (editorial and

advertising content); Provision of portals on the Internet; Video

and/or audio streaming (continuous real-time transmission of video

and/or audio streams on computer networks); Rental of objects in

connection with the providing of the aforesaid services, included in

this class; Consultancy and information in relation to the aforesaid

services, included in this class.

Class 41: Training, education; providing of training; entertainment; publication

in relation to the aforesaid.

Class 42: Computer programming; graphic design services; design of

advertising space on the internet; creation, care, rental,

maintenance and installation of software; providing or rental of

electronic memory space on the internet (webspace); providing

platforms on the internet; layout and design of homepages and

websites; provision of search engines for the internet; rental of web

servers; rental of computers and computer software; digital image

processing (graphic design); information technology, computer

programming, product design and industrial design, design, graphic

above goods and services. It may proceed for the remaining goods and

services.

3. Each party bears its own costs.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 15 367 378 for the figurative mark

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.

a) The goods and services

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

relative to the design of printed circuit boards and the design of electronic products.

Class 42: Computer programming relating to computer software having applications

in the design of printed circuit boards and the design of electronic products.

The contested goods and services are the following:

Class 9: Recorded and unrecorded sound, image and data carriers (except

unexposed films); Media content; Recorded content; Magnetic data carriers;

Compact discs, DVDs and other digital recording media; USB flash drives; Apparatus

for recording, transmitting or reproduction of sounds, images or data; Apparatus for

interactive television, calculating machines; Hardware; Data processing apparatus;

Computers; Computer programs and software (recorded and/or downloadable);

transparencies, tickets; Bookbinding material; Photographs; Stationery; Instructional

and teaching materials (not apparatus); Voucher books, unencoded tokens and

prepaid cards of cardboard and/or paper, including coated with plastic; Office

requisites (except furniture); Artists’ materials; Plastic materials for packaging (not

included in other classes); Adhesives for stationery or household purposes; Paint

brushes; Typewriters; Printers’ type; Printing blocks; Paper cardboard; Works of art

and figurines of paper and cardboard, and architects’ models; Filtering materials of

paper; Bags and articles for packaging, wrapping and storage of paper, cardboard or

plastics; Stationery and educational supplies; Disposable paper products; Parts and

accessories for all the aforesaid goods, included in this class.

advertising and marketing; Development and creation of advertising spaces;

Development of advertising concepts; Arranging for advertising space; Creation,

updating and rental of advertising space on the internet; Banner exchange; Providing

of information in the field of marketing and advertising in oral and written form,

including by means of print media and electronic media; Organisational consultancy

in the field of marketing and advertising; Marketing studies; Market analysis;

Advertising research; Opinion polling; Computerised file management; Collating,

systematisation and compiling of data in computer databases; Attracting customers

and customer care by means of mailing and distribution of goods for advertising

purposes; Dissemination of advertising matter; Bill-posting; Direct mail advertising;

Publication of printed matter (including in electronic form), for advertising purposes;

Production of lottery, television, radio and Internet commercials; Presentation of

companies on the Internet and other media; Arranging of subscriptions to

administration; Office functions; Business consultancy and advisory services;

Organisational consultancy; Business management and organization consultancy;

Business organisation consulting; Professional business consulting; Rental of objects

in connection with the providing of the aforesaid services, included in this class;

Consultancy and information in relation to the aforesaid services, included in this

class.

Class 38: Telecommunications; Providing of access to information, text, drawings

and images on the internet; Providing of portals, blogs, forums, chat rooms and chat

lines on the internet; News agencies; Providing of access to computer programs on

data networks; Providing user access to global computer networks; Computer aided

transmission of messages and images; Electronic mail; Compilation and supply of

news and general news information, including being electronic (news agencies);

Providing access to information on the Internet; Providing access to databases;

Broadcasting and retransmission of film, television, radio, BTX, videotext, teletext

the aforesaid services, included in this class; Consultancy and information in relation

to the aforesaid services, included in this class.

Class 41: Training, education; Providing of training; Entertainment; Publication of

printed matter and publications (except for advertising purposes); Online publications

(non-downloadable); Providing electronic publications, not downloadable; Editing

websites, namely editing texts for publication on the Internet; Writing and publication

of texts (except publicity texts); Photography; Publishing services, except printing;

News reporters services; Photographic reporting; Awarding of prizes for cultural

purposes; Arranging of prize competitions and prize games and conducting of

games; Development, design and production of film, television and radio

Class 42: Computer programming; Programmable electronic Internet, television and

radio programme guides; Graphic design services; Design of advertising space on

the Internet; Creation, care, rental, maintenance and installation of software; Server

administration; Providing or rental of electronic memory space on the Internet

(webspace); Providing platforms on the Internet; Layout and design of homepages

and websites; Provision of search engines for the Internet; Rental of web servers;

Rental of computers and computer software; Digital image processing (graphic

design); Information technology, computer programming, architecture, interior design,

product design and industrial design, design, graphic design; Rental of software for

Internet access; Electronic data storage; Hosting of digital content, namely blogs;

Class 45: Licensing of industrial property rights and copyright; Management of

industrial property rights and copyright; Issuing licences for franchising concepts;

purposes; Licensing of computer software [legal services]; Allocating and registering

of domain names; Legal consultancy with regard to franchising concepts; Film,

television and video licensing; Contract negotiation in relation to rights to films,

television and radio productions and other video and audio programmes, and of print

media and other printed products; Providing of social networks on the internet;

Rental and leasing of objects in connection with the providing of the aforesaid

services, included in this class; Consultancy and information in relation to the

aforesaid services, included in this class.

The terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and

services, indicates that the specific goods and services are only examples of items

included in the category and that protection is not restricted to them. In other words,

they introduce a non-exhaustive list of examples (on the use of ‘in particular’, which

has the same function as ‘including’, see a reference in 09/04/2003, T-224/01,

Nu-Tride, EU:T:2003:107).

services to a broader category, are exclusive and restrict the scope of protection only

to the goods and services specifically listed.

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

Computers; magnetic data carriers are identically contained in both lists of goods.

The contested apparatus for recording, transmitting or reproduction of sounds,

images or data; apparatus for interactive television, calculating machines; hardware;

data processing apparatus; information technology and audiovisual equipment are

included in the broad categories of, or overlap with, the opponent’s data processing

equipment. Therefore, they are identical.

The contested recorded content; computer programs and software (recorded and/or

downloadable); apps (software), namely applications for smartphones, tablet PCs, e-

readers and other mobile or stationery IT devices (downloadable) are identical to the

opponent’s computer programs in human and machine readable form for use in

applications pertaining to the design of printed circuit boards and the design of

magnetic data carriers. They have the same producers and the same distribution

channels. They can also be complementary.

The contested recorded and unrecorded data carriers (except unexposed films);

compact discs, DVDs and other digital recording media; USB flash drives; (parts and

accessories for all the aforesaid goods, included in this class) are similar to the

opponent’s magnetic, optical and magneto-optical data carriers. It is common for

those parts and accessories to be produced by the same company and distributed

through the same channels of trade. Moreover, the goods can have the same end

users and be complementary.

The contested apparatus for recording, transmitting or reproduction of sounds,

images or data; apparatus for interactive television, calculating machines; hardware;

data processing apparatus; information technology and audiovisual equipment;

(parts and accessories for all the aforesaid goods, included in this class) are similar

to the opponent’s data processing equipment. They have the same producers and

the same distribution channels. Moreover, they can be complementary.

printed circuit boards and the design of electronic products. Consequently, they can

have the same producers, end users and distribution channels. Furthermore, they

are complementary.

The contested recorded and unrecorded sound, image (except unexposed films);

downloadable sound and/or image files are similar to a low degree to the opponent’s

computer programs in human and machine readable form for use in applications

pertaining to the design of printed circuit boards and the design of electronic

products. The contested files can be related to the opponent’s specific goods;

therefore, they can have the same end users and distribution channels. Furthermore

they are complementary.

and they do not have the same purpose, distribution channels or producer. They are

not in competition or complementary.

Contested goods in Class 16

The contested printed matter, in particular newspapers, periodicals, magazines,

books, prospectuses, pamphlets, programmes, leaflets, press kits, posters, placards,

transparencies, tickets; instructional and teaching materials (not apparatus); parts

and accessories for all the aforesaid goods, included in this class are identical to the

opponent’s printed materials, namely books, manuals, customer news letters, the

aforementioned goods exclusively concerning computer software having applications

included in this class are similar to the opponent’s books, as a voucher book can

contain tokens for the design of electronic products. They can have the same

The contested stationery; paper cardboard are similar to a low degree to the

opponent’s printed materials, namely books, manuals, customer news letters, the

aforementioned goods exclusively concerning computer software having applications

relative to the design of printed circuit boards and the design of electronic products,

as they can have the same end users and distribution channels.

The contested unencoded tokens and prepaid cards of cardboard and/or paper,

including coated with plastic; parts and accessories for all the aforesaid goods,

included in this class are similar to a low degree to the opponent’s customer news

letters. It is perfectly conceivable that the newsletter is sent with tokens or a prepaid

card to award a loyal customer, for instance. Therefore, they can have the same

distribution channels and end users.

The contested photographs are dissimilar to the opponent’s goods and services in

opponent’s goods in Class 16 are books, manuals and customer newsletters on a

specific topic: computer software with applications that relate to the design of printed

circuit boards and of electronic products. Therefore, those goods and the contested

goods have different purposes, distribution channels and producers. They are not in

competition or complementary.

The contested adhesives for stationery or household purposes; office requisites

(except furniture); printing blocks; stationery and educational supplies are dissimilar

to the opponent’s goods and services in Classes 9, 16 and 42 because they do not

have the same purpose, method of use or distribution channels. They are not in

competition or complementary.

Classes 9, 16 and 42. The opponent’s goods and services are specific computer-

related goods and services, and printed matter for a specific purpose. There is no link

between them and the contested goods, and they do not have the same purposes,

distribution channels or producers. They are not in competition or complementary.

Contested goods in Class 28

The contested games and playthings are similar to the opponent’s computers in

Class 9, as the contested goods include electronic games and devices for

computers. They can have the same producers, end users and distribution channels.

are not in competition or complementary.

The opponent’s goods and services are specific computer-related goods and

services and printed matter for a specific purpose in relation to the design of printed

circuit boards and the design of electronic products.

Advertising services consist of providing others with assistance in the sale of their

goods and services by promoting their launch and/or sale, or of reinforcing a client’s

position in the market and acquiring competitive advantage through publicity. Many

different means and products can be used to fulfil this objective. These services are

provided by specialist companies, which study their client’s needs, provide all the

necessary information and advice for marketing the client’s goods and services, and

create a personalised strategy for advertising them through newspapers, websites,

videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the

The same applies to the comparison of advertising services with goods that can be

used as a medium for disseminating advertising, such as data carriers in Class 9,

and newsletters in Class 16. These goods and services are considered dissimilar.

The contested marketing services; marketing of advertising; arranging advertising

time in all relevant media; planning and conducting of advertising initiatives in media

of all kinds; development and creation of materials for advertising and marketing;

development and creation of advertising spaces; development of advertising

concepts; arranging for advertising space; creation, updating and rental of

advertising space on the internet; providing of information in the field of marketing

purposes; sales promotion; production of advertising material; arranging contracts,

for others, for the buying and selling of goods and the providing of services;

conducting of competitions and prize games for advertising purposes; presentation of

companies on the Internet and other media; arranging of subscriptions to

newspapers and periodicals, for others; public relations; banner exchange;

production of lottery, television, radio and Internet commercials; arranging

commercial transactions for third parties, also within the framework of e-commerce;

rental of objects in connection with the providing of the aforesaid services, included

in this class; consultancy and information in relation to the aforesaid services,

included in this class are related to advertising services, as they are specific services

for advertising. Therefore, the same reasoning applies, they are dissimilar to the

with the necessary support to acquire, develop and expand market share. The

services include activities such as business research and assessments, cost and

assistance activity that may be useful in the management of a business, such as

advice on how to efficiently allocate financial and human resources, improve

productivity, increase market share, deal with competitors, reduce tax bills, develop

new products, communicate with the public, market products, research consumer

trends, launch new products, create a corporate identity, etc. Therefore, business

management is dissimilar to all the opponent’s goods and services.

The contested office functions; business administration; business consultancy and

advisory services; organisational consultancy; business management and

organization consultancy; business organisation consulting; professional business

with the providing of the aforesaid services, included in this class; consultancy and

information in relation to the aforesaid services, included in this class are services

related to business management. Therefore, the same reasoning applies and those

services are dissimilar to the opponent’s goods and services in Classes 9, 16 and 42.