OPPOSITION DIVISION
OPPOSITION No B 2 585 936
O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom
(opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way,
Cambridge CB24 9ZR, United Kingdom (professional representative)
a g a i n s t
Chatguru INC., 16192 Coastal Highway, Lewes, Sussex DE 19958, United States of
America (holder), represented by Zlatarevi Patent and Trademark, Dianabad 31b,
b-1/14, 1172 Sofia, Bulgaria (professional representative).
On 17/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 585 936 is upheld for all the contested goods and services.
2. International registration No 1 231 184 is entirely refused protection in respect
of the European Union.
3. The holder bears the costs, fixed at EUR 650.
REASONS
The opponent filed an opposition against all the goods and services of international
registration designating the European Union No 1 231 184 for the word mark
‘CHATGURU’. The opposition is based on, inter alia, European Union trade mark
registration No 10 245 942 for the word mark ‘GURU TV’ and United Kingdom trade
mark registration No 3 024 436 for the word mark ‘GURU’. The opponent invoked
Article 8(1)(a) and (b) and Article 8(5) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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.
Decision on Opposition No B 2 585 936 page: 2 of 23
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 10 245 942 and United
Kingdom trade mark registration No 3 024 436.
a) The goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark registration No 10 245 942
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life-saving and teaching
apparatus and instruments; apparatus and instruments for conducting, switching,
transforming, accumulating, regulating or controlling electricity; apparatus for
recording, transmission or reproduction of sound or images; magnetic data carriers,
recording discs; automatic vending machines and mechanisms for coin operated
apparatus; cash registers; calculating machines, data processing equipment and
computers; fire-extinguishing apparatus; apparatus for the transmission of sound and
image; telecommunications apparatus; mobile telecommunication apparatus; mobile
telecommunications handsets; computer hardware; computer software; computer
software downloadable from the Internet; PDAs (Personal Digital Assistants), pocket
PCs, mobile telephones, laptop computers; telecommunications network apparatus;
drivers software for telecommunications networks and for telecommunications
apparatus; protective clothing; protective helmets; computer software recorded onto
CD Rom; SD-Cards; glasses, spectacle glasses, sunglasses, protective glasses and
cases therefor; contact lenses; cameras; camera lenses; MP3 players; audio tapes,
audio cassettes, audio discs; audio-video tapes, audio-video cassettes, audio-video
discs; video tapes, video cassettes, video discs; CDs, DVDs; electronic publications
(downloadable); mouse mats; magnets; mobile telephone covers, mobile telephone
cases; magnetic cards, encoded cards; parts and fittings for all the aforesaid goods.
Class 35: Advertising; business management; business administration; office
functions; retail services and online retail services relating to scientific, nautical,
surveying, photographic, cinematographic, optical weighing, measuring, signalling,
checking (supervision), life-saving and teaching apparatus and instruments,
apparatus and instruments for conducting, switching, transforming, accumulating,
regulating or controlling electricity, apparatus for recording, transmission or
reproduction of sound or images, magnetic data carriers, recording discs, automatic
vending machines and mechanisms for coin operated apparatus, cash registers,
calculating machines, data processing equipment and computers, fire extinguishing
apparatus, apparatus for the transmission of sound or image, telecommunications
apparatus, mobile telecommunication apparatus, mobile telecommunications
handsets, computer hardware, computer software, computer software downloadable
from the Internet, PDAs (Personal Digital Assistants), pocket PCs, mobile
telephones, laptop computers, telecommunications network apparatus, drivers
software for telecommunications networks and for telecommunications apparatus,
protective clothing, protective helmets, computer software recorded onto CD-Rom,
SD-Cards, glasses, spectacle glasses, sunglasses, protective glasses and cases
therefor, contact lenses, cameras, camera lenses, MP3 players, audio tapes, audio
cassettes, audio discs, audio-video tapes, audio-video cassettes, audio-video discs,
video tapes, video cassettes, video discs, CDs, DVDs, electronic publications
(downloadable), mouse mats, magnets, mobile telephone covers, mobile telephone
Decision on Opposition No B 2 585 936 page: 3 of 23
cases, magnetic cards, encoded cards; information and advisory services relating to
the aforesaid services; information and advisory services relating to the aforesaid
services provided on-line from a computer database or the Internet; information and
advisory services in relation to the aforesaid services provided over a
telecommunications network.
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; information
and advisory services relating to the aforesaid services; information and advisory
services relating to the aforesaid services provided on-line from a computer
database or the Internet; information and advisory services in relation to the
aforesaid services provided over a telecommunications network.
Class 37: Building construction; repair; installation services; information and advisory
services relating to the aforesaid services; information and advisory services relating
to the aforesaid services provided on-line from a computer database or the Internet;
information and advisory services in relation to the aforesaid services provided over
a telecommunications network.
Class 38: Telecommunications; telecommunications services; mobile
telecommunications services; telecommunications portal services; Internet portal
services; mobile telecommunications network services; fixed line telecommunication
services; provision of broadband telecommunications access; broadband services;
broadcasting services; television broadcasting services; broadcasting services
relating to Internet protocol TV; provision of access to Internet protocol TV; Internet
access services; email and text messaging services; information services provided
by means of telecommunication networks relating to telecommunications; services of
a network provider, namely rental and handling of access time to data networks and
databases, in particular the Internet; communications services for accessing a
database, leasing of access time to a computer database, providing access to
computer databases, rental of access time to a computer database; operation of a
network, being telecommunication services; information and advisory services
relating to the aforesaid; information and advisory services relating to the aforesaid
services provided on-line from a computer database or the Internet; information and
advisory services in relation to the aforesaid services provided over a
telecommunications network.
Class 39: Transport; packaging and storage of goods; travel arrangement; provision
of information relating to travel, transport, traffic, traffic flows and congestion;
information and advisory services relating to the aforesaid services; information and
advisory services relating to the aforesaid services provided on-line from a computer
database or the Internet; information and advisory services in relation to the
aforesaid services provided over a telecommunications network.
Class 41: Education; providing of training; entertainment; sporting and cultural
activities; interactive entertainment services; electronic games services provided by
means of any communications network; entertainment services provided by means
of telecommunication networks; information services relating to education, training,
entertainment, sporting and cultural activities provided by means of
telecommunication networks; provision of news information; television production
services, television programming services; television production and television
programming services provided by means of Internet protocol technology; provision
of entertainment by means of television and Internet protocol television; provision of
musical events; entertainment club services; discotheque services; presentation of
live performances; night clubs; rental of music venues and stadiums; casino services;
information and advisory services relating to the aforesaid; information and advisory
Decision on Opposition No B 2 585 936 page: 4 of 23
services relating to the aforesaid services provided on-line from a computer
database or the Internet; information and advisory services in relation to the
aforesaid services provided over a telecommunications network.
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; IT services; computer programming services;
services of a programmer; recovery of computer data; consultancy in the field of
computer hardware; computer programming; duplication of computer programs;
computer rental; computer software design; installation of computer software;
maintenance of computer software; updating of computer software; rental of
computer software; rental of computer hardware; computer system design; computer
systems analysis; consultancy in the field of computer software; conversion of data
or documents from physical to electronic media; creating and maintaining websites
for others; data conversion of computer programs and data (not physical
conversion); hosting computer sites (web sites); services of engineers; technical
consulting and expert advice and expert opinion relating to technology; rental of data
processing apparatus and computers; technical services relating to projection and
planning of equipment for telecommunications; services of information brokers and
providers, namely product research for others; weather forecasting; research in the
field of telecommunication technology; monitoring of network systems in the field of
telecommunications; technical support services relating to telecommunications and
apparatus; information and advisory services relating to the aforesaid; information
and advisory services relating to the aforesaid services provided on-line from a
computer database or the Internet; information and advisory services in relation to
the aforesaid services provided over a telecommunications network.
Class 43: Services for providing food and drink; temporary accommodation;
information and advisory services relating to the aforesaid services; information and
advisory services relating to the aforesaid services provided on-line from a computer
database or the Internet; information and advisory services in relation to the
aforesaid services provided over a telecommunications network.
Class 44: Medical services; veterinary services: hygienic and beauty care for human
beings or animals; agriculture, horticulture end forestry services; information and
advisory services relating to the aforesaid services; information and advisory
services relating to the aforesaid services provided on-line from a computer
database or the Internet; information and advisory services in relation to the
aforesaid services provided over a telecommunications network.
Class 45: Personal and social services rendered by others to meet the needs of
individuals; security services for the protection of property and individuals; legal
services; management and exploitation of copyright; arbitration services; information
and advisory services relating to the aforesaid services; information and advisory
services relating to the aforesaid services provided on-line from a computer
database or the Internet; information and advisory services in relation to the
aforesaid services provided over a telecommunications network.
United Kingdom trade mark registration No 3 024 436
Class 35: Retail services and online retail services connected with scientific, nautical,
surveying, photographic, cinematographic, optical, weighing, measuring, signalling,
checking (supervision), life-saving and teaching apparatus and instruments,
apparatus and instruments for conducting, switching, transforming, accumulating,
Decision on Opposition No B 2 585 936 page: 5 of 23
regulating or controlling electricity, apparatus for recording, transmission or
reproduction of sound or images, magnetic data carriers, recording discs, automatic
vending machines and mechanisms for coin operated apparatus, cash registers,
calculating machines, data processing equipment and computers, fire-extinguishing
apparatus, apparatus for the transmission of sound and image, telecommunications
apparatus, mobile telecommunication apparatus, mobile telecommunications
handsets, computer hardware, computer application software, computer software,
computer software downloadable from the Internet, PDAs (Personal Digital
Assistants), pocket PCs, mobile telephones, laptop computers, telecommunications
network apparatus, drivers software for telecommunications networks and for
telecommunications apparatus, protective clothing, protective helmets, televisions,
headphones, GPS navigation devices, computer software recorded onto CD Rom,
SD-Cards (secure digital cards), glasses, spectacle glasses, sunglasses, protective
glasses and cases therefor, contact lenses, cameras, camera lenses, MP3 players,
audio tapes, audio cassettes, audio discs, audio-video tapes, audio-video cassettes,
audio-video discs, video tapes, video cassettes, video discs, CDs, DVDs, electronic
publications (downloadable), mouse mats, magnets, mobile telephone covers,
mobile telephone cases, magnetic cards, encoded cards, printed matter, books,
magazines, paper, stationery, clothing, footwear, headgear, household or kitchen
utensils and containers, jewellery, precious stones, horological and chronometric
instruments, musical instruments, apparatus for lighting, textiles and textile goods,
leather and imitations of leather, handbags, rucksacks, purses, bags and sports
bags, travel bags, backpacks, duffel bags, boot bags, holdalls, wallets, purses, credit
card holders, games and playthings, gymnastic and sporting articles, meat, fish,
poultry, game, coffee, tea, cocoa, sugar, rice, beers, mineral waters, aerated waters
and other non-alcoholic drinks, alcoholic beverages, matches; information and
advisory services relating to the aforesaid services; information and advisory
services relating to the aforesaid services provided on-line from a computer
database or the Internet; information and advisory services relating to the aforesaid
services provided over a telecommunications network.
Class 36: Insurance; Financial affairs; Monetary affairs; Real estate affairs;
Charitable fund raising; Debit card services; Financial consultancy; Financial
information; Financial management; Financial sponsorship; Financing services;
Funds transfer (Electronic -); Issue of tokens of value; Financial information and
advice relating to tariffs; information and advice relating to finance and insurance;
financial payment services; payment processing services; electronic payment
services; automated payment services; payment collection agencies; processing of
payment transactions via the Internet; money transfer services; electronic funds
transfer services; bill payment services; issuing of tokens of value relating to
customer loyalty schemes; information and advisory services relating to the aforesaid
services; information and advisory services relating to the aforesaid services
provided on-line from a computer database or the Internet; information and advisory
services relating to the aforesaid services provided over a telecommunications
network.
Class 37: Installation, maintenance and repair of telecommunications apparatus and
equipment; installation, maintenance and repair communications networks, computer
networks and data networks; installation, maintenance and repair of computer
hardware; installation, maintenance and repair of computers and computer
peripherals; computer and telephone battery recharge services; information and
advisory services relating to the aforesaid services; information and advisory
services relating to the aforesaid services provided on-line from a computer
database or the Internet; information and advisory services relating to the aforesaid
services provided over a telecommunications network.
Decision on Opposition No B 2 585 936 page: 6 of 23
Class 38: Telecommunications; Cellular telephone communication; Communications
by computer terminals; Communications by fiber [fibre] optic networks;
Communications by telephone; Computer aided transmission of messages and
images; Electronic bulletin board services [telecommunications services]; Electronic
mail; Information about telecommunication; Message sending; Paging services
[radio, telephone or other means of electronic communication]; Providing internet
chatrooms; Providing telecommunications connections to a global computer network;
Providing user access to global computer networks; Rental of facsimile apparatus;
Rental of message sending apparatus; Rental of modems; Rental of
telecommunication equipment; Rental of telephones; Satellite transmission;
Teleconferencing services; Telephone services; Transmission of digital files; Voice
mail services; Telecommunications services; mobile telecommunications services;
telecommunications portal services; Internet portal services; mobile
telecommunications network services; fixed line telecommunication services;
provision of broadband telecommunications access; broadband services;
broadcasting services; television broadcasting services; broadcasting services
relating to Internet protocol TV; provision of access to Internet protocol TV; Internet
access services; email and text messaging services; information services provided
by means of telecommunication networks relating to telecommunications; services of
a network provider, namely rental and handling of access time to data networks and
databases, in particular the Internet; communications services for accessing a
database, leasing of access time to a computer database, providing access to
computer databases, rental of access time to a computer database; operation of a
network, being telecommunication services; the provision of discussion forums;
operating web logs [blogs]; operating message boards; webcasting; information and
advisory services relating to the aforesaid; information and advisory services relating
to the aforesaid services provided on-line from a computer database or the Internet;
information and advisory services relating to the aforesaid services provided over a
telecommunications network.
Class 41: Education; Providing of training; Entertainment; Sporting and cultural
activities; Arranging and conducting of colloquiums; Arranging and conducting of
conferences, congresses, seminars, symposiums and workshops; Booking of seats
for shows; Coaching [training]; Entertainment information; Film production, other than
advertising films; Organization of competitions [education or entertainment];
Organisation of exhibitions for cultural or educational purposes; Organisation of
shows [impresario services]; Organization of sports competitions; Practical training
[demonstration]; Production of music; Production of radio and television
programmes; Production of shows; Publication of books; Publication of electronic
books and journals on-line; Publication of texts, other than publicity texts; Radio
entertainment; Recording studio services; Recreation facilities (Providing -);
Recreation information; Rental of audio equipment; Rental of sound recordings;
Rental of video cassette recorders; Rental of videotapes; Tuition relating to
telecommunications apparatus and instruments; Interactive entertainment services;
electronic games services provided by means of any communications network;
entertainment services provided by means of telecommunication networks;
information services relating to education, training, entertainment, sporting and
cultural activities provided by means of telecommunication networks; provision of
news information; television production services, television programming services;
television production and television programming services provided by means of
Internet protocol technology; provision of entertainment by means of television and
Internet protocol television; provision of musical events; entertainment club services;
discotheque services; presentation of live performances; night clubs; rental of music
venues and stadiums; casino services; ticket reservations for entertainment, sporting
Decision on Opposition No B 2 585 936 page: 7 of 23
and cultural events; ticket information services for entertainment, sporting and
cultural events; ticket agency services; provision of education, instruction, tuition and
training; production, presentation and distribution of audio, video, still and moving
images and data; publishing services (including electronic publishing services); non-
downloadable electronic publications; arranging and conducting of courses, seminars
and workshops; arranging and conducting of courses, seminars and workshops in
relation business start-ups; personal development and leadership training services;
mentoring services; provision of education, instruction, tuition and training provided
on-line from a computer database or the Internet; production, presentation and
distribution of audio, video, still and moving images and data provided on-line from a
computer database or the Internet; information and advisory services relating to the
aforesaid; information and advisory services relating to the aforesaid services
provided on-line from a computer database or the Internet; information and advisory
services relating to the aforesaid services provided over a telecommunications
network.
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; Computer programming; Computer rental;
Computer virus protection services; Construction drafting; Consultancy in the design
and development of computer hardware; Monitoring of computer systems by remote
access; Providing search engines for the internet; Rental of web servers; Research
and development for others; Technical research; IT services; computer programming
services; services of a programmer; recovery of computer data; consultancy in the
field of computer hardware; computer programming; duplication of computer
programs; computer rental; computer software design; installation of computer
software; maintenance of computer software; updating of computer software; rental
of computer software; rental of computer hardware; computer system design;
computer systems analysis; consultancy in the field of computer software; conversion
of data or documents from physical to electronic media; creating and maintaining
websites for others; data conversion of computer programs and data (not physical
conversion); hosting computer sites (web sites); services of engineers; expert advice
and expert opinion relating to technology; rental of data processing apparatus and
computers; technical services relating to projection and planning of equipment for
telecommunications; services of information brokers and providers, namely product
research for others; weather forecasting; research in the field of telecommunication
technology; monitoring of network systems in the field of telecommunications;
technical support services relating to telecommunications and apparatus information
and advisory services relating to the aforesaid; information and advisory services
relating to the aforesaid services provided on-line from a computer database or the
Internet; information and advisory services relating to the aforesaid services provided
over a telecommunications network.
The contested goods and services are the following:
Class 9: Software and middleware, including in the field of mobile applications, for
displaying and sharing a user's location and finding, locating and interaction with
other users and publishing opinions and recommendations for products, goods and
services; computer software development tools; application programming interface
(API) for computer software which facilitates online services for communication
between people, building applications for communication between people with the
ability to record, access, management and recovery of data; computer software that
facilitates the uploading (upload), recording, accessing, posting, displaying, tagging
Decision on Opposition No B 2 585 936 page: 8 of 23
(labeling), blogs, extracting, linking, sharing or otherwise providing data or
information via computers or similar electronic devices and communication networks;
magnetic and optical data carriers, and other digital information carriers; apparatus
and instruments for recording, transmission or reproduction of sound or images;
audiovisual and photographic devices; display screens, television apparatus, film and
video equipment; audio recordings; computer software packages; interactive video
software; interactive computer software; interactive entertainment software for use
with personal computers; interfaces for computers; information technology and
audiovisual equipment; software for encrypted access; computers and computer
hardware; peripherals adapted for use with computers; computer software in the field
of electronic publishing; computer software for analysing market information;
computer software for biometric systems for the identification and authentication of
persons; computer software for audibly controlling a computer and the operation
thereof; computer software for electronic commerce; computer programmes for data
processing; communications processing computer software; computer software for
authorizing access to data bases; computer software to enhance the audio-visual
capabilities of multimedia applications; computer software for producing financial
models; computer software for creating searchable databases of information and
data; computer software for creating dynamic websites; computer software for use in
education and training, including self-study; computer software to enable the
searching of data; computer telephony software; computer networking hardware;
computer hardware for telecommunications; computer software platforms; programs
for computers; computer programs [downloadable software]; communications
servers [computer hardware]; musical sound recordings; downloadable musical
sound recordings; software for education, training and entertainment; software for
creating audio and audiovisual content; portable sound reproducing apparatus;
portable sound recording apparatus; application software; game programs [computer
software]; computer software to automate data warehousing; virtual reality software;
software for interactive television; music-composition software; interfaces for
computers; computer graphics software; software for computer operating systems;
computer search engine software; communication software; software to control and
improve audio equipment sound quality; software for online messaging; software for
commerce over a global communications network; software for facilitating secure
credit card transactions; network access server operating software; computer
programs relating to financial matters; hardware for transmitting and receiving data;
network access server hardware; GPS apparatus; electronic agendas; tablets
[computers]; smart phones; mobile computers; laptop computers; sleeves for
laptops; glasses cases; downloadable ring tones for mobile phones; cameras
[photography].
Class 35: Advertising; contests and incentive award programs to promote the sale of
products and services for third parties; procurement services for others [purchasing
goods and services for other businesses]; online retail services; business
management; business administration; clerical services; marketing and promotional
services; market research and information services; promotion of goods and services
for third parties via computer and communication networks; facilitating the sales of
products and services for third parties via computer and communication networks;
computerised point-of-sale data collection services for retailers; business information
Decision on Opposition No B 2 585 936 page: 9 of 23
services provided on-line from a computer database or the Internet; business
promotion services; demonstration of goods for promotional purposes; making
subscriptions to online publications of third parties; consultations relating to business
promotion; consultancy relating to the organisation of promotional campaigns for
business; advertising via on-line marketplaces; on-line data processing services;
arranging and conducting marketing promotional events for others; organization of
events, exhibitions, fairs and shows for commercial, promotional and advertising
purposes; organization, operation and supervision of sales and promotional incentive
schemes; providing on-line auction services; providing a searchable online
advertising guide featuring the goods and services of other on-line vendors on the
Internet; providing an on-line commercial information directory on the Internet;
presentation of goods for retail sale through all means of communication; production
of promotional videos, DVDs and audio-visual recordings; promoting the sale of the
services [on behalf of others] by arranging advertisements; promotion, advertising
and marketing of on-line websites; sales promotion for others provided through the
distribution and the administration of privileged user cards; promotion [advertising] of
concerts; promotion [advertising] of travel; dissemination of advertising for others via
an on-line communications network on the Internet; distribution of advertising,
marketing and promotional material; developing promotional campaigns for business;
advertising, including promotion relating to the sale of articles and services for third
parties by the transmission of advertising material and the dissemination of
advertising messages on computer networks; advertising, marketing and promotional
services; retail shop window display arrangement services; services for retail sale,
including online, relating to the sale of chemical substances, paints, lacquers,
colorants, bleaching preparations and other substances for laundry use, polishing
and degreasing preparations, soap, perfumery, cosmetics, lubricating oils and
greases, pharmaceutical preparations, veterinary preparations and disinfectants,
ironmongery, machines and machine tools, hand tools, hand-operated tools,
electrical household and appliances, computers, computer peripheral equipment,
mobile computers, smartphones, tablets, apparatus for lighting, heating, cooking and
ventilating, vehicles and spare parts therefor, jewellery, batteries, watches, musical
instruments, printed matter, instructional training materials and aids, building
materials, goods made of leather and imitation leather, furniture, office furniture,
stationery items, kitchen utensils, dishware, textiles and textile goods, clothing,
footwear, headgear, materials for floor covering, games and playthings, toys, sporting
articles, food stuffs, beverages, tobacco, cigarettes, articles for use with tobacco;
distribution and retail services, including online, of computer software programs
stored on digital or analog media audiovisual works, and games; advertising,
marketing and promotional consultancy, advisory and assistance services.
Class 38: Telecommunication services; providing access to the forums [chat rooms]
in public networks, chat services; providing online instant messaging services;
transmission of voice communications over IP server (VoIP); telephone, video and
voice communications; services for providing access to computer, electronic and
online databases; electronic transmission of data, messages and information;
providing online communications links which transfer users of a website to other local
and global web sites or pages; facilitating access to third party web sites via a
universal login; services to access audio, video and text via computer and other
Decision on Opposition No B 2 585 936 page: 10 of 23
communications networks, including upload, publication, display, use of labels (tags)
and the electronic transmission of data, information, audio and video images;
electronic mail; sending messages over a network with text, audio and video content;
video circuits for outside broadcast services (terms considered too vague by the
International Bureau – rule 13.2.b) of the Common Regulations), providing
telecommunications connections to a global computer network; transmission of data
through a global operating distance network for processing user ratings; electronic
data interchange services, stored in databases, accessible via telecommunication
networks; electronic voice messaging services; broadcasting programs via a global
computer network; message sending via computer networks; communications over
computer networks or the internet; value added network [communication] services;
network conferencing services; network transmission of sound, images, signals,
information and data; online document delivery via a global computer network;
providing access to computer networks; providing online forums and chat rooms for
social networking; providing access to a global computer information network;
operating of a telecommunications network; worldwide computer network access
services; operating of electronic communications networks; transmission of audio,
video, photographic images, text, graphics and data; providing access to computer
databases in the fields of social networks.
Class 41: Entertainment; on-line games services; electronic publications (terms
considered too vague by the International Bureau – rule 13.2.b) of the Common
Regulations); provision of training and education, self-study; services for sharing
audio and video content, photos, texts and any other electronic publications (terms
considered too vague by the International Bureau – rule 13.2.b) of the Common
Regulations); entertainment services, namely facilitating interactive multiplayer and
single player game services for games via computer or communication networks;
providing information about online computer games and video games via computer
or communication networks; services of organization and conduction of competitions
for video players and players of computer games; organisation of games; animated
musical entertainment services; rental of phonographic and music recordings;
providing on-line electronic publications, not downloadable; audio and video
production, and photography; services for the showing of video recordings; recording
of music; music publishing and music recording services; publication of music books;
music composition services; entertainment provided by videotext systems; musical
performances and competitions; arranging and conducting of concerts; live musical
concerts; music concerts online radio and TV; musical entertainment; musical
education services; music tuition by correspondence courses; organisation of games
and competitions; game services provided on-line from a computer network;
entertainment services performed by a musical group; arranging of music
performances; organisation of musical entertainment; arranging of music
performances; organising of educational games; providing digital music from the
Internet; rental of audio tapes bearing recorded music; providing digital music [not
downloadable] from the internet; publication of documents in the field of training,
science, public law and social affairs; electronic game services and competitions
provided by means of the Internet; electronic library services for the supply of
electronic information, including archive information, in the form of electronic texts,
audio and/or video information and data, games and amusements; services
Decision on Opposition No B 2 585 936 page: 11 of 23
providing entertainment in the form of recorded music; music library services;
provision of social club services.
Class 42: Scientific and technological services and research and design relating
thereto; design and development of computer hardware and software; IT services
(terms considered too vague by the International Bureau – rule 13.2.b) of the
Common Regulations); computer hardware and software consultancy; creating and
maintaining web-sites; providing search engines for obtaining data via
communications networks; computer services, namely, hosting a website for
registered users to organize sports related groups and events, participate in
discussions, and engage in social, business, sport and community networking;
computer services, namely, hosting of computer applications and electronic means
for others for organizing and conducting meetings, events and interactive
discussions via communication networks; design and development of computer
software that facilitates online services for communication between people on a local
basis; provision of online network services that allows users to transfer and share
data with personal data or between websites (terms considered too vague by the
International Bureau – rule 13.2.b) of the Common Regulations); providing access to
a website featuring technology that enables on-line users to create personal profiles
featuring social networking information and to transfer and share such information
among multiple websites (terms considered too vague by the International Bureau –
rule 13.2.b) of the Common Regulations); providing software applications for social
networks (terms considered too vague by the International Bureau – rule 13.2.b) of
the Common Regulations); creating virtual communities (terms considered too vague
by the International Bureau – rule 13.2.b) of the Common Regulations) and computer
services such as customized webpages containing user-defined specialized
information, profiles, audio, video, photographic images, text, graphics and data;
providing on-line (non-recording) software for displaying and sharing of user location
and finding, locating and interacting with other users, including the assessment
offered by others products, goods or services.
Class 45: Personal and social services (terms considered too vague by the
International Bureau – rule 13.2.b) of the Common Regulations); services related to
on-line social networking; social introduction, networking (terms considered too
vague by the International Bureau – rule 13.2.b) of the Common Regulations) and
dating services; social presentation and dating (terms considered too vague by the
International Bureau – rule 13.2.b) of the Common Regulations); personal and social
services rendered by others to meet the needs of individuals Personal and social
services; services related to on-line social networking; social introduction, networking
and dating services; social presentation and dating; personal and social services
rendered by others to meet the needs of individuals, namely, personal concierge
services for others comprising making request personal arrangements and
reservations and providing customer-specific information to meet individual needs.
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
Decision on Opposition No B 2 585 936 page: 12 of 23
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 software and middleware, including in the field of mobile applications,
for displaying and sharing a user's location and finding, locating and interaction with
other users and publishing opinions and recommendations for products, goods and
services; computer software development tools; computer software packages;
interactive video software; interactive computer software; interactive entertainment
software for use with personal computers; software for encrypted access; computer
software in the field of electronic publishing; computer software for analysing market
information; computer software for biometric systems for the identification and
authentication of persons; computer software for audibly controlling a computer and
the operation thereof; computer software for electronic commerce; computer
programmes for data processing; communications processing computer software;
computer software for authorizing access to data bases; computer software to
enhance the audio-visual capabilities of multimedia applications; computer software
for producing financial models; computer software for creating searchable databases
of information and data; computer software for creating dynamic websites; computer
software for use in education and training, including self-study; computer software to
enable the searching of data; computer telephony software; computer software
platforms; programs for computers; computer programs [downloadable software];
software for education, training and entertainment; software for creating audio and
audiovisual content; application software; game programs [computer software];
computer software to automate data warehousing; virtual reality software; software
for interactive television; music-composition software; computer graphics software;
software for computer operating systems; computer search engine software;
communication software; software to control and improve audio equipment sound
quality; software for online messaging; software for commerce over a global
communications network; software for facilitating secure credit card transactions;
network access server operating software; computer programs relating to financial
matters are included in the broad category, or overlap with the opponent’s software.
Therefore, they are identical.
The contested interfaces for computers (twice in the contested list of goods and
services) overlap with the opponent’s computer software. These broad categories of
goods cannot be clearly separated and are, therefore, considered identical.
The contested application programming interface (API) is a set of rules that allows
programmers to develop software for a particular operating system without having to
be completely familiar with that operating system. To that extent, the contested
application programming interface (API) for computer software which facilitates
online services for communication between people, building applications for
communication between people with the ability to record, access, management and
recovery of data; computer software that facilitates the uploading (upload), recording,
accessing, posting, displaying, tagging (labeling), blogs, extracting, linking, sharing
or otherwise providing data or information via computers or similar electronic devices
and communication networks is highly similar to the opponent’s computer software.
These goods are complementary and have the same IT nature. Moreover, they are
made by the same IT specialists and are sold through the same distribution channels.
Magnetic data carriers; computer and computer hardware; glasses cases are
identically contained in both lists of goods (including synonyms).
Decision on Opposition No B 2 585 936 page: 13 of 23
The contested optical data carriers include, as a broader category the opponent’s
CDs. 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 other digital information carriers is included in, or at least overlap with
the opponent’s magnetic data carriers. Therefore, they are identical.
The contested apparatus and instruments for recording, transmission or reproduction
of sound or images; audiovisual and photographic devices; display screens,
television apparatus, film and video equipment; audio recordings are included, or
overlap with the opponent’s telecommunications apparatus. Therefore, they are
identical.
The contested audiovisual equipment will be interpreted as referring to equipment
whose audiovisual capabilities are essential to its primary purpose, such as
equipment used for reproducing or recording sounds and images. It includes, as a
broader category the opponent’s apparatus for the transmission of sound and image.
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 IT equipment are used in the application of computers and
telecommunications equipment to store, retrieve, transmit and manipulate data, often
in the context of a business or other enterprise. In its broadest sense, IT equipment
refers to anything related to computing technology, such as networking, hardware,
software etc. It includes, as a broader category the opponent’s computer hardware.
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 peripherals adapted for use with computers; musical sound
recording ; downloadable musical sound recordings; portable sound reproducing
apparatus; portable sound recording apparatus; electronic agendas; tablets
[computers]; smart phones; mobile computers; laptop computers are included in, or
overlap with, the broad category of the opponent’s data-processing equipment.
Therefore, they are identical.
The contested computer networking hardware; computer hardware for
telecommunications; communications servers [computer hardware]; hardware for
transmitting and receiving data; network access server hardware are included in the
broad category of the opponent’s computer hardware. Therefore, they are identical.
The contested GPS apparatus overlap with the opponent’s nautical apparatus as
GPS apparatus may be used for nautical purposes. Therefore, they are identical.
The contested downloadable ring tones for mobile phones are software or at least
application that can be downloaded on the mobile phone. To that extent, these
contested goods overlap with the opponent’s drivers software for telecommunications
networks and for telecommunications apparatus. Therefore, they are identical.
The contested cameras [photography] are included in the broad category of the
opponent’s cameras. Therefore, they are identical.
The contested sleeves for laptops are highly similar to the opponent’s mobile
telephone cases. These goods have the same nature, purpose and method of use.
Furthermore, they are sold in the same outlets and the manufacturers are the same.
Decision on Opposition No B 2 585 936 page: 14 of 23
Contested services in Class 35
Advertising; business management; business administration are identically contained
in both lists of services.
The contested contests and incentive award programs to promote the sale of
products and services for third parties; marketing and promotional services;
promotion of goods and services for third parties via computer and communication
networks; facilitating the sales of products and services for third parties via computer
and communication networks; business promotion services; demonstration of goods
for promotional purposes; making subscriptions to online publications of third parties;
consultations relating to business promotion; consultancy relating to the organisation
of promotional campaigns for business; advertising via on-line marketplaces;
arranging and conducting marketing promotional events for others; organization of
events, exhibitions, fairs and shows for commercial, promotional and advertising
purposes; organization, operation and supervision of sales and promotional incentive
schemes; providing a searchable online advertising guide featuring the goods and
services of other on-line vendors on the Internet;; presentation of goods for retail sale
through all means of communication; production of promotional videos, DVDs and
audio-visual recordings; promoting the sale of the services [on behalf of others] by
arranging advertisements; promotion, advertising and marketing of on-line websites;
sales promotion for others provided through the distribution and the administration of
privileged user cards; promotion [advertising] of concerts; promotion [advertising] of
travel; dissemination of advertising for others via an on-line communications network
on the Internet; distribution of advertising, marketing and promotional material;
developing promotional campaigns for business; advertising, including promotion
relating to the sale of articles and services for third parties by the transmission of
advertising material and the dissemination of advertising messages on computer
networks; advertising, marketing and promotional services advertising, marketing
and promotional consultancy, advisory and assistance services are included in the
broad category of the opponent’s advertising. Therefore, they are identical.
The contested online retail services (which is a vague term) include, as a broader
category the opponent’s online retail services relating to scientific. Since the
Opposition Division cannot dissect ex officio the broad category of the contested
services, they are considered identical to the opponent’s services.
The contested clerical services are included in the broad category of the opponent’s
office functions. Therefore, they are identical.
The contested clerical services include, as a broader category the on-line data
processing services. Office functions cover services which are aimed at performing
day-to-day operations that are required by a business to achieve its commercial
purpose. Since the Opposition Division cannot dissect ex officio the broad category
of the contested services, they are considered identical to the opponent’s services.
The contested market research and information services; business information
services provided on-line from a computer database or the Internet. providing an on-
line commercial information directory on the Internet are at least similar to the
opponent’s business management These services consist in gathering information
and providing tools and expertise to enable their customers to carry out their
business or provide businesses with the necessary support to acquire develop and
expand market share. The services include activities such as business research and
assessments, cost and price analyses, determining the price that consumers are
Decision on Opposition No B 2 585 936 page: 15 of 23
willing to pay or receive to effect the sale of a business etc. Therefore, they have the
same nature and purpose. They also have the same distribution channels and
service providers and target the same public.
The contested computerised point-of-sale data collection services for retailers involve
the collection of data about which goods have been bought, and when, in a retailer’s
store. The opponent’s business administration services consist of organising people
and resources efficiently so as to direct activities toward common goals and
objectives. Therefore, these services are at least similar, as business administration
may include the management of stocks.
The same reasoning applies in relation to the contested shop window display
arrangement services. To that extent these contested services and the opponent’s
business administration are, at least, similar.
The contested procurement services for others [purchasing goods and services for
other businesses] are procurement services and involve buying goods for other
businesses. They have similar nature and purpose as the opponent’s business
administration. They can be complementary, have same origins and users. The
goods are similar.
In accordance with settled case-law, the contested retail services related to specific
goods are considered similar to the opponent’s retail services related to other specific
goods. The services at issue have the same nature since both are retail services, the
same purpose of allowing consumers to conveniently satisfy different shopping
needs, and the same method of use. To that extent, the contested services for retail
sale, including online, relating to the sale of chemical substances, paints, lacquers,
colorants, bleaching preparations and other substances for laundry use, polishing
and degreasing preparations, soap, perfumery, cosmetics, lubricating oils and
greases, pharmaceutical preparations, veterinary preparations and disinfectants,
ironmongery, machines and machine tools, hand tools, hand-operated tools,
electrical household and appliances, computers, computer peripheral equipment,
mobile computers, smartphones, tablets, apparatus for lighting, heating, cooking and
ventilating, vehicles and spare parts therefor, jewellery, batteries, watches, musical
instruments, printed matter, instructional training materials and aids, building
materials, goods made of leather and imitation leather, furniture, office furniture,
stationery items, kitchen utensils, dishware, textiles and textile goods, clothing,
footwear, headgear, materials for floor covering, games and playthings, toys, sporting
articles, food stuffs, beverages, tobacco, cigarettes, articles for use with tobacco;
distribution and retail services, including online, of computer software programs
stored on digital or analog media audiovisual works, and games have to be
considered at least similar to the opponent’s retail services and online retail services
relating to scientific, nautical, surveying, photographic, cinematographic, optical
weighing, measuring, signalling, checking (supervision), life-saving and teaching
apparatus and instruments, apparatus and instruments for conducting, switching,
transforming, accumulating, regulating or controlling electricity, apparatus for
recording, transmission or reproduction of sound or images, magnetic data carriers,
recording discs, automatic vending machines and mechanisms for coin operated
apparatus, cash registers, calculating machines, data processing equipment and
computers, fire extinguishing apparatus, apparatus for the transmission of sound or
image, telecommunications apparatus, mobile telecommunication apparatus, mobile
telecommunications handsets, computer hardware, computer software, computer
software downloadable from the Internet, PDAs (Personal Digital Assistants), pocket
Decision on Opposition No B 2 585 936 page: 16 of 23
PCs, mobile telephones, laptop computers, telecommunications network apparatus,
drivers software for telecommunications networks and for telecommunications
apparatus, protective clothing, protective helmets, computer software recorded onto
CD-Rom, SD-Cards, glasses, spectacle glasses, sunglasses, protective glasses and
cases therefor, contact lenses, cameras, camera lenses, MP3 players, audio tapes,
audio cassettes, audio discs, audio-video tapes, audio-video cassettes, audio-video
discs, video tapes, video cassettes, video discs, CDs, DVDs, electronic publications
(downloadable), mouse mats, magnets, mobile telephone covers, mobile telephone
cases, magnetic cards, encoded cards.
The contested providing on-line auction services is similar to a low degree to the
opponent’s retail services and online retail services connected to horological and
chronometric instruments, alcoholic beverages (UK earlier trade mark). Both those
services relate to the sale of goods, which in a particular case might be the
opponent’s horological and chronometric instruments or alcoholic beverages. There
is an obvious link between commercial auctions and retail activities in that their target
publics may be interested in buying the same goods. While retail is the more
conventional way of selling goods, nowadays it often happens that, for instance,
prestigious watches or alcoholic beverages are offered for sale in auctions.
Therefore, the services are also in competition with each other.
Contested services in Class 38
The contested telecommunication services; providing access to the forums [chat
rooms] in public networks, chat services; providing online instant messaging
services; transmission of voice communications over IP server (VoIP); telephone,
video and voice communications; services for providing access to computer,
electronic and online databases; electronic transmission of data, messages and
information; providing online communications links which transfer users of a website
to other local and global web sites or pages; facilitating access to third party web
sites via a universal login; services to access audio, video and text via computer and
other communications networks, including upload, publication, display, use of labels
(tags) and the electronic transmission of data, information, audio and video images;
electronic mail; sending messages over a network with text, audio and video content;
video circuits for outside broadcast services (terms considered too vague by the
International Bureau – rule 13.2.b) of the Common Regulations), providing
telecommunications connections to a global computer network; transmission of data
through a global operating distance network for processing user ratings; electronic
data interchange services, stored in databases, accessible via telecommunication
networks; electronic voice messaging services; broadcasting programs via a global
computer network; message sending via computer networks; communications over
computer networks or the internet; value added network [communication] services;
network conferencing services; network transmission of sound, images, signals,
information and data; online document delivery via a global computer network;
providing access to computer networks; providing online forums and chat rooms for
social networking; providing access to a global computer information network;
operating of a telecommunications network; worldwide computer network access
services; operating of electronic communications networks; transmission of audio,
video, photographic images, text, graphics and data; providing access to computer
databases in the fields of social networks are included or overlap with the broad
categories of the opponent’s telecommunications; providing telecommunications
connections to a global computer network; cellular telephone communication;
communications by computer terminals; communications by fiber [fibre] optic
Decision on Opposition No B 2 585 936 page: 17 of 23
networks; communications by telephone; computer aided transmission of messages
and images. Therefore, they are identical.
Contested services in Class 41
The contested Entertainment; on-line games services; electronic publications (terms
considered too vague by the International Bureau – rule 13.2.b) of the Common
Regulations); provision of training and education, self-study; services for sharing
audio and video content, photos, texts and any other electronic publications (terms
considered too vague by the International Bureau – rule 13.2.b) of the Common
Regulations); entertainment services, namely facilitating interactive multiplayer and
single player game services for games via computer or communication networks;
providing information about online computer games and video games via computer
or communication networks; services of organization and conduction of competitions
for video players and players of computer games; organisation of games; animated
musical entertainment services; rental of phonographic and music recordings;
providing on-line electronic publications, not downloadable; audio and video
production, and photography; services for the showing of video recordings; recording
of music; music publishing and music recording services; publication of music books;
music composition services; entertainment provided by videotext systems; musical
performances and competitions; arranging and conducting of concerts; live musical
concerts; music concerts online radio and TV; musical entertainment; musical
education services; music tuition by correspondence courses; organisation of games
and competitions; game services provided on-line from a computer network;
entertainment services performed by a musical group; arranging of music
performances; organisation of musical entertainment; arranging of music
performances; organising of educational games; providing digital music from the
Internet; rental of audio tapes bearing recorded music; providing digital music [not
downloadable] from the internet; publication of documents in the field of training,
science, public law and social affairs; electronic game services and competitions
provided by means of the Internet; electronic library services for the supply of
electronic information, including archive information, in the form of electronic texts,
audio and/or video information and data, games and amusements; services
providing entertainment in the form of recorded music; music library services;
provision of soial club services are included in the broad categories of the opponent’s
education; providing of training; entertainment; sporting and cultural activities;
interactive entertainment services. Therefore, they are identical.
Contested services in Class 42
Scientific and technological services and research and design relating thereto;
design and development of computer hardware and software; IT services (terms
considered too vague by the International Bureau – rule 13.2.b) of the Common
Regulations); computer hardware and software consultancy; creating and
maintaining web-sites; are identically contained in both lists of services.
The contested computer services, namely, hosting a website for registered users to
organize sports related groups and events, participate in discussions, and engage in
Decision on Opposition No B 2 585 936 page: 18 of 23
social, business, sport and community networking; computer services, namely,
hosting of computer applications and electronic means for others for organizing and
conducting meetings, events and interactive discussions via communication
networks; provision of online network services that allows users to transfer and share
data with personal data or between websites (terms considered too vague by the
International Bureau – rule 13.2.b) of the Common Regulations); providing access to
a website featuring technology that enables on-line users to create personal profiles
featuring social networking information and to transfer and share such information
among multiple websites (terms considered too vague by the International Bureau –
rule 13.2.b) of the Common Regulations) are included in the broad category hosting
computer sites (web sites) of the opponent. Therefore, they are identical.
The contested design and development of computer software that facilitates online
services for communication between people on a local basis; providing software
applications for social networks (terms considered too vague by the International
Bureau – rule 13.2.b) of the Common Regulations); creating virtual communities
(terms considered too vague by the International Bureau – rule 13.2.b) of the
Common Regulations) and computer services such as customized webpages
containing user-defined specialized information, profiles, audio, video, photographic
images, text, graphics and data are included in the broad category of the opponent’s
design and development of computer hardware and software. Therefore, they are
identical.
Finally, the contested providing search engines for obtaining data via
communications networks; providing on-line (non-recording) software for displaying
and sharing of user location and finding, locating and interacting with other users,
including the assessment offered by others products, goods or services are included
in the broad category of the opponent’s IT services. Therefore, they are identical.
Contested services in Class 45
The contested personal and social services (terms considered too vague by the
international bureau – rule 13.2.b) of the common regulations); services related to on-
line social networking; social introduction, networking (terms considered too vague
by the international bureau – rule 13.2.b) of the common regulations) and dating
services; social presentation and dating (terms considered too vague by the
international bureau – rule 13.2.b) of the common regulations); personal and social
services rendered by others to meet the needs of individuals personal and social
services; services related to on-line social networking; social introduction, networking
and dating services; social presentation and dating; personal and social services
rendered by others to meet the needs of individuals, namely, personal concierge
services for others comprising making request personal arrangements and
reservations and providing customer-specific information to meet individual needs are
included in the broad category of the opponent’s personal and social services
rendered by others to meet the needs of individuals. Therefore, they are identical.
b) 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.
Decision on Opposition No B 2 585 936 page: 19 of 23
In the present case, the goods and services found to be identical or similar are
directed at both the public at large and business customers with specific professional
knowledge or expertise.
The degree of attention may vary from average to high.
c) The signs
GURU TV
GURU
CHATGURU
Earlier trade marks Contested sign
The relevant territory is the European Union and the United Kingdom.
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.
All the elements of the signs are meaningful in certain territories, for example in those
countries where English is understood. Consequently, the Opposition Division finds it
appropriate to focus the comparison of the signs on the English-speaking part of the
public.
The earlier signs are the word marks ‘GURU’ and ‘GURU TV’. The contested sign is
the word mark ‘CHATGURU’.
The element ‘GURU’ of the signs will be understood as ‘a person who some people
regard as an expert or leader, a religious and spiritual leader and teacher’ by the
relevant public. As it is not descriptive, allusive or otherwise weak for the relevant
goods and services, it is distinctive.
The element ‘TV’ of the earlier sign will be associated with ‘television’. Bearing in
mind that the relevant goods and services are technology-related and
communications-related, this element is weak or non-distinctive for part of these
goods and services, such as ‛scientific, photographic, cinematographic, apparatus
and instruments for recording, transmission or reproduction of sound or images;
advertising, telecommunications, entertainment’.
The element ‘CHAT’ of the contested sign will be associated with ‘exchange of
messages’. Bearing in mind that the relevant goods and services technology-related,
Decision on Opposition No B 2 585 936 page: 20 of 23
computer-related and communications-related, this element is weak or non-distinctive
for part of these goods and services, such as ‛software; telecommunications,
entertainment; personal and social services’.
The signs have no element that could be considered clearly more dominant than
other elements.
Visually, the signs coincide in the element ‘GURU’. However, they differ in the
elements ‘TV’ (contained in one of the earlier marks) and ‘CHAT’ respectively which
have been considered to be weak for at least part of the goods and services.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables /gu-ru/, present
identically in all the signs. The pronunciation differs in the sound of the letters /tv/ of
the earlier sign and in the syllable /chat/ of the contested sign, which have no
counterparts in the other sign.
Therefore, the signs are similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a similar
meaning, ‘GURU’, the signs are conceptually similar to an average degree, even
taking into consideration the initial concept of ‘CHAT’ of the contested sign.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier marks is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
According to the opponent, the earlier marks have been extensively used and enjoy
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 marks will rest on
its distinctiveness per se. In the present case, the earlier trade marks as a whole
have 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
marks must be seen as normal, despite the presence of a weak elements in one of
the marks, as stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
Decision on Opposition No B 2 585 936 page: 21 of 23
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.).
Moreover, the Court has set out the essential principle that 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 the 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).
!" #
!$%&' #!$!()
With regard to the United
Kingdom trade mark registration No 3 024 436 the entirety of the earlier word mark is
included in the contested sign.
The differences between these signs are, essentially, found in the first verbal
element, ‘chat’, of the contested sign. Even considering the goods and services in
relation to which this element is normally distinctive, this does not alter the
abovementioned assessment of the similarity between the marks, as the contested
sign is neither too long nor complex and the consumers will be able to instantly
comprehend the elements CHAT and GURU contained therein. The coinciding
element in question, GURU, is normally distinctive for all the relevant goods and
services. Therefore, consumers might legitimately assume that the contested sign is
a new version or brand-line, originating from the same undertaking responsible for
the ‘GURU’ goods and services branded by the earlier marks.
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23!45%5-…5/*/6*,$4
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8
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!!!
Thus, the Opposition Division considers that the marks under comparison convey
similar overall impressions and that a likelihood of confusion between them cannot
Decision on Opposition No B 2 585 936 page: 22 of 23
be safely excluded for the English-speaking part of the relevant 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
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 10 245 942 and United Kingdom trade mark
registration No 3 024 436. It follows that the contested trade mark must be rejected
for all the contested goods and services.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier marks, there is no need to assess the enhanced degree of distinctiveness of
the opposing marks due to their reputation as claimed by the opponent. The result
would be the same even if the earlier marks enjoyed an enhanced degree of
distinctiveness.
As the earlier European Union trade mark registration No 10 245 942 and United
Kingdom trade mark registration No 3 024 436 lead 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
rights 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 grounds of the opposition,
namely Article 8(5) EUTMR.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the holder 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Julia TESCH Agueda MAS PASTOR Gueorgui IVANOV
Decision on Opposition No B 2 585 936 page: 23 of 23
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.