OPPOSITION No B 2 650 524

Amcrest Global Holdings Limited, Wilton House, Wilton Park Place, Dublin, Ireland (opponent), represented by Schiweck Weinzierl Koch Patentanwälte Partnerschaft mbB, Landsbergerstraße 98, 80339 München, Germany (professional representative)

a g a i n s t

Shenzhen Foscam Intelligent Technology Co., Ltd., Room A, 9th Floor, F5 Building, TCL International e City, No.1001 Zhongshan Yuan Road, Liuxian Tong, Xili, Nanshan District, Shenzhen 518055, People's Republic of China (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).

On 14/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 650 524 is partially upheld, namely for the following contested services:

Class 42:        Research and development of new products for others; data conversion of computer programs and data [not physical conversion]; rental of web servers; monitoring of computer systems by remote access; software as a service [SaaS]; cloud computing.

2.        European Union trade mark application No 14 859 383 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 859 383. The opposition is based on European Union trade mark registration No 15 007 644. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

1. The goods and services

In the present proceedings, the contested sign predates European Union trade mark registration No 15 007 644 on which the opposition is based as the contested sign was filed on 02/12/2015 and the opponent’s mark on 18/01/2016.

However, in the notice of opposition, the opponent claims the priority date of 19/07/2015 for its European Union trade mark on the basis of United States trade mark registrations No 86/697,642 and 86/697,648.

The abovementioned United States trade mark registrations cover the following goods and services:

Class 9:        Computer application software for mobile devices, desktop computers, and other wireless devices, namely, software for use in recording, viewing, storing, sharing and analyzing online audio and video; radiotelephony sets; walkie-talkies; telephone communications equipment, namely, voice over IP communications servers; voice over IP telephones, voice over IP software for operating PBX's; voice over IP analog telephone adaptors; and voice over IP public telephone switch network adaptors; software for telecommunications services, namely, software for the operation and management of telephone communication, facsimile, voicemail, call processing, call waiting and internet telephony (VoIP) service.

Class 38:        Providing online non-downloadable software for recording, viewing, storing, sharing and analyzing online audio and video; Telecommunications services, namely, providing local and long distance telephone services, online facsimile services, unified messaging, voice mail, call processing, call waiting, and voice over Internet protocol (VOIP) services; providing on-line non-downloadable software for telecommunications services, namely, for use in the operation and management of local and long distance telephone services, online facsimile transmission, unified messaging, voice mail, call processing, call waiting, and voice over Internet protocol (VOIP).

The notice of opposition filed on 01/02/2016 indicates that the opposition is based on all the goods and services of European Union trade mark registration No 15 007 644. However, the Opposition Division notes that the opponent’s European Union trade mark registration covers more classes and more goods and services in Classes 9, 12, 35, 38 and 42 than the United States trade mark registrations No 86/697,642 and 86/697,648, which serve as the basis for the priority claims.

In this respect it must be noted that pursuant to Article 29 EUTMR “a person who has duly filed an application for a trade mark in or in respect of any State party to the Paris Convention or to the Agreement establishing the World Trade Organisation, or his successors in title, shall enjoy, for the purpose of filing an EU trade mark application for the same trade mark in respect of goods or services which are identical with or contained within those for which the application has been filed, a right of priority during a period of six months from the date of filing of the first application.”

Thus, those goods and services covered by the earlier European Union trade mark which go beyond the literal meaning of the goods and services covered by the United States registrations cannot be taken into account since the priority claims do not extend to those goods and services. Therefore, for the comparison of the goods and services, only those goods and services covered by the earlier European Union trade mark registration that correspond to the goods and services covered by the United States registrations will be taken into account. Taking further into account that the wording and the classification of some of these goods and services were amended by the Office, the goods and services on which the opposition is based in view of all the foregoing are the following:

Class 9:        Computer application software for mobile devices, desktop computers, and other computer devices, namely, software for use in recording, viewing, storing, sharing and analyzing online audio and video; radiotelephony sets; walkie-talkies; telephone communications equipment, namely, voice over IP communications servers; voice over IP telephones, voice over IP software for operating PBX's; voice over IP analog telephone adaptors; and voice over IP public telephone switch network adaptors; software for telecommunications services, namely, software for the operation and management of telephone communication, facsimile, voicemail, call processing, call waiting and internet telephony (VoIP) service.

Class 38:        Telecommunications services, namely, providing local and long distance telephone services, online facsimile services, unified messaging, voice mail, call processing, call waiting, and voice over Internet protocol (VOIP) services. 

Class 42:        Providing online non-downloadable software for recording, viewing, storing, sharing and analyzing online audio and video; providing on-line non-downloadable software for telecommunications services, namely, for use in the operation and management of local and long distance telephone services, online facsimile transmission, unified messaging, voice mail, call processing, call waiting, and voice over internet protocol (VOIP).

The contested services are the following:

Class 35:        On-line advertising on a computer network; communication media (presentation of goods on-), for retail purposes; advertising by mail order; assistance (business management-); sales promotion for others; import-export agencies; systemization of information into computer databases; accounting; sponsorship search; provision of an on-line marketplace for buyers and sellers of goods and services.

Class 42:        Research and development of new products for others; quality testing; material testing; industrial design; design of interior decor; data conversion of computer programs and data [not physical conversion]; rental of web servers; monitoring of computer systems by remote access; software as a service [SaaS]; cloud computing.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’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 is to 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.

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 services in Class 35

The contested on-line advertising on a computer network; communication media (presentation of goods on-), for retail purposes; advertising by mail order and sales promotion for others; sponsorship search essentially 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, web sites, videos, the internet, etc. Advertising and promotion services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, the contested services are dissimilar to all the opponent’s goods or services because they have different nature, purpose and method of use. Moreover, they do not coincide in producers/providers, end users and distribution channels. Finally, they are neither complementary nor in competition.

The contested provision of an on-line marketplace for buyers and sellers of goods and services are services related to the management of a business, including aspects of overseeing and supervising the access to an on-line marketplace. The contested assistance (business management-) include any consultancy, advisory 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. The contested import-export agencies are services provided by specialised agencies in relation to the business of bringing goods into and sending them out of a country as these movements of products across national borders are often subject to quotas, tariffs and trade agreements. The contested systemization of information into computer databases and accounting are office functions related to administrative data processing and services related to a systematic process of identifying, recording, measuring, classifying, verifying, interpreting and communicating commercial and financial information. These services have no sufficient connection with the opponent’s goods and services. They have different nature, purpose and method of use. Moreover, they do not coincide in producers/providers, end users and distribution channels. Finally, they are neither complementary nor in competition. Therefore, these goods and services are dissimilar.

Contested services in Class 42

The contested research and development of new products for others include the research and development of software. Therefore, these services are similar to the opponent’s computer application software for mobile devices in Class 9 because these goods and services are complementary and they may coincide in producers/providers and end users.

The contested rental of web servers provides a computer system that processes requests via HTTP, the basic network protocol used to distribute information on the World Wide Web. The contested monitoring of computer systems by remote access is the monitoring of computer activity and data stored on a hard drive, or data being transferred over computer networks from a distance. The contested software as a service [SaaS] is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. Telecommunications service providers started to extend their offering by climbing up the IT stack and becoming software as a service (SaaS) provider. The contested cloud computing is a type of Internet-based computing that provides shared computer processing resources and data to computers and other devices on demand. Since a few years telecommunication companies are offering through cloud services computing power and data storage. These services are all IT-related services. They are similar to the opponent’s telecommunications services, namely, providing local and long distance telephone services, online facsimile services, unified messaging, voice mail, call processing, call waiting, and voice over Internet protocol (VOIP) services in Class 38. This is because these services have the same purpose, are complementary, and have the same producers and distribution channels.

The contested data conversion of computer programs and data [not physical conversion] consists of the conversion of computer data from one format to another. These services might be necessary for example for the transfer of data from one telecommunication service provider to another telecommunication service provider. These IT-related services may also be complementary to the opponent’s telecommunications services, namely, providing local and long distance telephone services, online facsimile services, unified messaging, voice mail, call processing, call waiting, and voice over Internet protocol (VOIP) services in Class 38. These services may have the same producers and distribution channels. Therefore, they are similar.

The contested design of interior décor is the process of shaping the experience of interior space, through the manipulation of spatial volume as well as surface treatment for the betterment of human functionality. The contested industrial design is a process of design applied to products that are to be manufactured through techniques of mass production. The purpose is to create and execute design solutions for problems of form, function, usability, physical ergonomics, marketing, brand development, sustainability, and sales. The contested quality testing; material testing are services related to a particular process or method to determine the quality of a product and a material, respectively. These services have no sufficient connection with the opponent’s goods and services in Classes 9, 38 and 42. They have different nature, purpose and method of use. They do not coincide in their commercial origin, end users and distribution channels. They are neither complementary nor in completion. These goods and services are dissimilar.

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 services found to be similar are directed at the public at large or at business customers with specific professional knowledge or expertise.

The degree of attention is considered high because these services are sophisticated and usually expensive.

3. The signs

AMCREST
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The word ‘AMCREST’ of both signs has no meaning for the relevant public and is, therefore, distinctive.

Regarding the slightly fancy typeface in which the contested sign is written, in particular the first letter ‘A’, it is not particularly elaborate or sophisticated, certainly not sufficiently to lead the consumer’s attention away from the element it seems to embellish.

The signs consist of a sole element without any component that could be considered more dominant.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs consist of the same element ‘AMCREST’. Visually, they differ only in the typeface of the contested sign, albeit not particularly elaborate as said above. Therefore, the signs are visually highly similar and aurally identical.

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

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark 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 for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

As has been concluded above, the contested services are partly similar and partly dissimilar. They are directed at the public at large or at business customers whose degree of attention is considered high. The signs are visually highly similar, aurally identical and, conceptually, there is no concept that could help consumers to differentiate them.

Therefore, when similarities between the signs are so considerable and the differences hardly noticeable, even the high degree of attention of the consumers in relation to the services at issue will not prevent confusion between the signs.

The opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 15 007 644.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to the goods and services of the earlier trade mark.

The rest of the contested services 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.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use/reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use/reputation.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the goods and services are not identical.

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 shall 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

Sandra IBAÑEZ

Benoit VLEMINCQ

Martina GALLE

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.