OPPOSITION No B 2 728 288

Ambient Sound Investments OÜ, Toompuiestee 33a, 10149 Tallinn, Estonia (opponent), represented by Mari Must, Roosikrantsi 2, 10119 Tallinn, Estonia (professional representative)

a g a i n s t

NetScout Systems Inc., 310 Littleton Road, Westford Massachusetts 01886, United States of America (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue London EC2N 2DG, United Kingdom (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 728 288 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 171 317 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 171 317. The opposition is based on European Union No 12 150 504. The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR and LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

Article 8(1)(a) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, an EUTM application shall not be registered if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.

Article 8(1)(b) EUTMR provides that 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

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

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software. 

The contested goods and services are the following:

Class 9:        Computer hardware; computer software, namely, computer software for monitoring and management of performance and availability of software applications; computer software, namely, computer software for analyzing wireless, cable, and wireline service performance; computer software for analyzing computer network performance.

Class 37:        Installation and repair of computer hardware; customizing computer hardware; maintenance of computer hardware.

Class 42:        Software as a service (SAAS) services, namely, software as a service featuring software for monitoring and management of performance and availability of software applications; software as a services, namely, software as a service for analyzing wireless, cable, and wireline service performance; software as a service for analyzing computer network performance; design and development of computer hardware and computer software.

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

The term ‘namely’, used 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 is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 goods in Class 9

The contested computer hardware and computer software, namely, computer software for monitoring and management of performance and availability of software applications; computer software, namely, computer software for analyzing wireless, cable, and wireline service performance; computer software for analyzing computer network performance are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information and programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation, respectively.

These goods are closely linked to the opponent’s design and development of computer hardware and software in Class 42, which include the writing of a computer program, i.e. a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations. This is because manufacturers of computer hardware and/or software will also commonly provide computer hardware- and/or software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

In this regard, the applicant refers to a previous decision of the Office in relation to opposition proceedings No B 1 620 650 of 30/10/2012 to support its argument that computer software in Class 9 would be dissimilar to design and development of computer hardware and software in Class 42. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. Nevertheless, in the present case, the previous case referred to by the applicant is not relevant to the present proceedings, since there has been a change of Office practice since then. saying and according to the current practice these goods and services are similar for the reasons already given above.

Contested goods in Class 37

The contested installation and repair of computer hardware; customizing computer hardware; maintenance of computer hardware are similar to the opponent’s design and development of computer hardware services: these services have the same nature. They can coincide in provider, targeted public and method of use. Furthermore they are complementary.

Contested goods in Class 42

Design and development of computer hardware and computer software are identically contained in both lists of services.

The contested software as a service (SAAS) services, namely, software as a service featuring software for monitoring and management of performance and availability of software applications; software as a services, namely, software as a service for analyzing wireless, cable, and wireline service performance; software as a service for analyzing computer network performance are all forms of cloud computing in which software is hosted on a central server and end users access it remotely (extracted from online English Dictionary Collins at www.collinsdictionary.com on 12/07/2017). These services are provided by the same undertakings and distributed through the same channels as the opponent’s design and development of computer hardware and software. They target the same public and can be complementary, or in competition. The services are therefore highly similar.

The applicant argues that the marks under comparison are used for different products and markets. However, in the assessment of likelihood of confusion, the Opposition Division is bound by the goods and services listed in the EUTM application and cannot proceed to analyse their actual use. The same consideration applies to the opponent’s services: the Opposition Division can consider only the list of services which appears on the trade mark registration certificate, without analysing the opponent’s actual business.

2. The signs

ASI	ASI
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and a part of the contested services, namely design and development of computer hardware and computer software in Class 42 are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these services. Furthermore, the remaining contested goods and services were found to be similar (to various degrees) to the services covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.

Therefore, the opposition is well founded on the basis of the opponent’s European Union No 12 150 504 and the contested application is rejected for all the contested goods and services.

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

Oana–Alina STURZA

Edith Elisabeth VAN DEN EEDE

Andrea VALISA

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.