OPPOSITION No B 2 730 334

Canvas X Software, Inc., c/o 2412 Marlene Drive, Victoria V9B 4L5, British Columbia, Canada (opponent), represented by Filemot Technology Law Ltd, 25 Southampton Buildings, London WC2A 1AL, United Kingdom (professional representative)

a g a i n s t

Canva Pty Ltd, 268 Devonshire St, Surry Hills NSW 2010, Australia (applicant), represented by A.Bre.Mar. S.R.L., Via Servais 27, 10146 Torino, Italy (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 730 334 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 190 374 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 15 190 374. The opposition is based on:

• European Union trade mark registration No 3 781 622 ‘CANVAS’;

• European Union trade mark registration No 13 202 478 ‘CANVAS X’.

The opponent invoked Article 8(1)(b) 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 European Union trade mark registration No 3 781 622.

1. The goods and services

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

Class 9:        Computer software for use in graphic design, desktop publishing, digital and electronic publishing, for preparing audiovisual materials in support of presentations, printing, preparing graphics, typesetting, preparing artistic, technical and scientific drawings and annotations, creating fonts, typefaces, and special graphical and textual effects; computer software for viewing, creating and manipulating graphic images on a computer; computer software containing clip art, and typefaces.

The contested goods and services are the following:

Class 9:        Computer software, namely apparatus for computer aided design, namely computers, computer monitors, computer hardware and computer aided design (CAD) software for general use; computer aided design programs for general use; computer programs for use in computer aided design; computer programs relating to computer aided design for use in editing designs; data processing programmes for archiving in computer aided design comprising computer hardware and computer peripherals; data processing programmes for editing in computer aided design; computer programmes and recorded software distributed online for use in database management; recorded computer programmes for use in database management; computer programming units in the nature of computer central processing units; downloadable computer programs for use in database management; computer programs for office use, namely for use in computer aided design; computer programs for positioning of text; computer programs for operating printers; computer programs for printing; computer programs for processing data; computer programs for processing information; computer programs for producing computer graphics; computer programs for promotional purposes, namely, for use in creating advertisements; computer programs for providing a graphical presentation of data; computer programs for use as reporting directories; computer programs for use as searching directories; computer programs for use in creating communications; computer programs for use in computer aided engineering; computer programs for use in computer aided design; computer programs for use in computer aided manufacturing; computer programs for use in database management; computer programs for use in desk top publishing; computer programs for use in developing computer programs; computer programs for video games; computer programs in machine readable form for use in database management; computer programs in machine readable form recorded on electronic media for use in database management; computer programs in the field of design analysis for use in computer aided design; computer software for use in the electronic storage of data.

Class 42:        Providing temporary use of a web-based software application for use as a design application that allows the creation of web or print designs such as marketing material or web site banners.

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 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.

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 aided design (CAD) software for general use; computer aided design programs for general use; computer programs for office use, namely for use in computer aided design; computer programs in the field of design analysis for use in computer aided design include, as broader categories, or overlap with, the opponent’s computer software for viewing, creating and manipulating graphic images on a computer. Therefore, they are identical.

The contested computer programs for use in computer aided design; computer programs relating to computer aided design for use in editing designs; data processing programmes for archiving in computer aided design comprising computer hardware and computer peripherals; data processing programmes for editing in computer aided design; computer programs for use in computer aided design; computer programs in the field of design analysis for use in computer aided design are included in the broad category of, or overlap with, the opponent’s computer software for viewing, creating and manipulating graphic images on a computer. Therefore, they are identical.

The contested computer programs for positioning of text; computer programs for operating printers; computer programs for printing; computer programs for processing data; computer programs for processing information; computer programs for producing computer graphics; computer programs for promotional purposes, namely, for use in creating advertisements; computer programs for providing a graphical presentation of data; computer programs for use in desk top publishing are included in the broad category of, or overlap with, the opponent’s computer software for use in graphic design, desktop publishing, digital and electronic publishing, for preparing audio-visual materials in support of presentations, printing, preparing graphics, typesetting, preparing artistic, technical and scientific drawings and annotations, creating fonts, typefaces, and special graphical and textual effects. Therefore, they are identical.

The contested computer software, namely apparatus for computer aided design, namely computers, computer monitors, computer hardware are all hardware for use in computer-aided design and are complementary to the opponent’s computer software for viewing, creating and manipulating graphic images on a computer, since this is software that is likely to be used in connection with the hardware. They also have the same distribution channels and target the same public. It is also likely that they are produced by the same manufacturer. Therefore, the goods are similar.

The contested computer programmes and recorded software distributed online for use in database management; recorded computer programmes for use in database management; computer programming units in the nature of computer central processing units; downloadable computer programs for use in database management are computer software for use in managing databases; they have the same distribution channels and methods of use as the opponent’s computer software for viewing, creating and manipulating graphic images on a computer. They may also be provided by the same manufacturers. Therefore, the goods are similar to a low degree.

Contested services in Class 42

The contested providing temporary use of a web-based software application for use as a design application that allows the creation of web or print designs such as marketing material or web site banners are online services for designing and creating images, such as marketing material. These services are in direct competition with the opponent’s computer software for viewing, creating and manipulating graphic images on a computer. They target the same public and can have the same provider. Therefore, they are similar.

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 and services found to be identical or similar are directed at the public at large and at professionals with specific professional knowledge or expertise in the case of some of the software. The relevant public’s degree of attention may vary from average, for computer programmes and recorded software distributed online for use in database management, which can often be included in the purchase of a computer, to high, for computer programs for use in computer aided design and for the services in Class 42, depending on the price, specialised nature and terms and conditions of the purchased goods and services.

3. The signs

CANVAS	CANVA
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public because this part will not understand the meanings of the verbal elements ‘CANVAS’ and ‘CANVA’; therefore, these elements are distinctive for this part of the public.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually and aurally, the signs coincide in the letters ‘CANVA’, which form the entire contested sign. They differ only in the additional letter ‘S’ at the end of the earlier mark.

Therefore, the signs are visually and aurally highly similar.

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.

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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are identical or similar to varying degrees and the signs are visually and aurally similar to a high degree, since they both contain the letters ‘CANVA’, which form the entire contested sign and almost all of the earlier mark. The only differing element is the letter ‘S’ at the end of the earlier mark, and this will have a limited impact on the relevant public because it is at the end.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Consequently, there is a likelihood of confusion because the visual and aural coincidences are overwhelming. This is equally true for the members of the public with a higher degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, and there is no need to analyse the remaining part of the public.

As earlier right European Union trade mark registration No 3 781 622 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 right 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 ground of the opposition, namely Article 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

Tobias KLEE

Magnus ABRAMSSON

Swetlana BRAUN

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.