OPPOSITION No B 2 607 706

Cleverlance Enterprise Solution a.s., Na Zámecké 410/8, 14000 Praha 4, Czech Republic (opponent), represented by Propatent – Patent. Známk. Graf. Kancelář, Pod Pekařkou 107/1, 147 00 Podolí, Praha 4, Czech Republic (professional representative)

a g a i n s t

Clever Inc., 140 2nd Street, 4th Floor, San Francisco, CA 94105, United States of America (holder), represented by Taylor Wessing, Isartorplatz 8, 80331 München, Germany (professional representative).

On 09/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 607 706 is upheld for all the contested services.

2.        International registration No 1 235 667 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 services of international registration designating the European Union No 1 235 667. The opposition is based on European Union trade mark registrations No 5 751 904 and No 10 161 941. The opponent invoked Article 8(1)(b) EUTMR.

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

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

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 10 161 941.

1. The services

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

Class 42: Computer programming; Computer software design and development; Software (updating of computer-); Computer systems analysis; Rental and licensing of software; Software servicing; Consultancy in the field of hardware and software, including the field of technological processes; Structuring and programming or otherwise creating databases, other data systems and applications for processing thereof, including their installation; Implementation, updating and maintenance, design, structuring and programming or other creation of Internet or intranet computer sites and pages (webpages and websites) and Internet or intranet applications; Data conversion of computer programmes, data or other information in electronic format from various formats to other formats; Conversion of documents, data or other information from physical to electronic media.

The contested services are the following:

Class 42: Application service provider featuring application programming interface (API) software for use in the collection, integration and access of student information systems data in connection with third party software applications; software as a service (SAAS) services featuring software for use in the collection, integration and access of student information systems data in connection with third party software applications; providing an interactive internet website portal featuring single sign on (SSO) functionality technology for students and teachers in conjunction with third party software applications.

An interpretation of the wording of the opponent’s list of services is required to determine the scope of protection of these services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The contested providing an interactive internet website portal featuring single sign on (SSO) functionality technology for students and teachers in conjunction with third party software applications is included in the broad category of the opponent’s implementation, updating and maintenance, design, structuring and programming or other creation of Internet or intranet computer sites and pages (webpages and websites) and Internet or intranet applications. Therefore, they are identical.

An ‘application service provider (ASP)’ is a business providing computer-based services to customers over a network, such as access to a particular software application using a standard protocol; an ‘application programming interface (API)’ is a set of routines, protocols, and tools for building software applications. Therefore, the contested application service provider featuring application programming interface (API) software for use in the collection, integration and access of student information systems data in connection with third party software applications is at least similar to the opponent’s implementation, updating and maintenance, design, structuring and programming or other creation of Internet or intranet computer sites and pages (webpages and websites) and Internet or intranet applications as they may have the same providers and distribution channels and furthermore they may target the same end users.

‘Software as a service (SAAS)’ is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. Therefore, the contested software as a service (SAAS) services featuring software for use in the collection, integration and access of student information systems data in connection with third party software applications are at least similar to the opponent’s licensing of software as they usually have the same providers and distribution channels and furthermore they target the same end users.

The holder makes reference to the holder’s website and raises the use of the different business segments and consumers that allegedly distinguish the conflicting signs. In particular, the holder claims that the opponent is active in the field of IT designing and applying IT solutions and services to customers in the financial sector, whereas it provides a platform as a service for the integration of student information systems, specifically with respect to educational applications. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T-568/12, Focus extreme, EU:T:2014:180, § 30 and the case-law cited therein). Therefore, as the opponent’s list of services is not restricted to any specific business sector or consumer, the argument raised by the holder is irrelevant.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased services.

3. The signs

	CLEVER
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘CLEVER’ is, as well as the remaining verbal elements of the earlier mark, meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘Cleverlance’ of the earlier mark will be clearly perceived by the relevant public as the combination of two components, ‘clever’ and ‘lance’. The holder claims that there is no reason to break down this element since there are no special characters or stylizations, but also asserts that the word ‘lance’ is understood by English speakers. While the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers could break them down into smaller parts. Therefore, bearing in mind the fact that ‘Cleverlance’ combines two meaningful English words and they are placed in the correct grammatical order, that is the adjective followed by the noun, it is foreseeable that the relevant public will break down this element. The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, the element ‘Cleverlance’ will be understood by the relevant public with the meaning conveyed by these two components, ‘intelligent spear’. As it is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

In its observations, the holder argues that the element ‘CLEVER’ of the earlier trade mark has a low distinctive character given that there are many trade marks that include this element. In support of its argument the holder refers to some trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘CLEVER’. Under these circumstances, the holder’s claims must be set aside.

The element ‘CREATE IT’ of the earlier mark will be perceived by the relevant public as a promotional message with a double meaning, that is as a play on words meaning ‘producing something (it)’ or ‘producing IT (Information Technology)’. Bearing in mind that the relevant services are computer-related, this element is at least weak for these services.

The contested sign ‘CLEVER’ will be understood as ‘quick to understand, learn, and devise or apply ideas; intelligent; ingenious’ (information extracted from Oxford Dictionaries on 05/06/2017 at www.oxforddictionaries.com) by the relevant public. Bearing in mind that the relevant services are technology-related, this element is weak for these services.

The element ‘Cleverlance’ in the earlier mark is the dominant element as it is the most eye-catching.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In the case of the earlier mark, the figurative aspects lay in the string of squares in shades of grey behind the element ‘CREATE IT.’, which are secondary in the sign, and the slight stylisation of the element ‘Cleverlance’.

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, the signs coincide in the element ‘CLEVER*’, which is the initial part and first component of the earlier mark and the entirety of the contested sign. However, they differ in the second component of the earlier mark, ‘-lance’, the secondary element ‘CREATE IT.’, as well as the figurative aspects of the sign, as described above.  

Therefore, and bearing in mind that the coinciding element appears at the beginning of the earlier mark in its dominant element, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘CLE-VER’, present identically in both signs. The pronunciation differs in the additional syllable ‘-LANCE’ of the earlier mark, which has no counterpart in the contested sign. It is foreseeable that the element ‘CREATE IT’ of the earlier mark will not be pronounced by the relevant public since it is clearly secondary in the sign by virtue of its fairly small size and because it has a commercial connotation.

Therefore, since the pronunciation of the signs may differ only in the last syllable of the earlier mark, they are aurally highly similar.

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, the signs are conceptually similar to an average degree.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As it has been found in the previous sections of the present decision, the services are identical or at least similar, the relevant public has a degree of attention that varies from average to high, and the earlier mark has a normal distinctiveness.

The signs are visually similar to an average degree since the contested sign, ‘CLEVER’, coincides with the beginning of the earlier mark, that is with the first component of the two that will be perceived in the element ‘Cleverlance’. Consequently, the signs are conceptually similar also to an average degree on account of the semantic content conveyed by the coinciding element. From an aural perspective, the signs are highly similar as they may differ only in the additional third syllable, ‘-LANCE’, of the earlier mark.

Furthermore, as seen above, the additional element ‘CREATE IT’ and the figurative aspects of the earlier mark are secondary and have less impact, therefore, they are not sufficient to override the aforementioned coincidence arising from the verbal element ‘CLEVER’.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). The Opposition Division considers that, despite the higher degree of attention that the relevant public may display when acquiring the services in question, it is very likely that the earlier mark is considered as being a variant or child brand of the contested sign. Consequently, bearing in mind the identity and similarity of the services in question, a significant part of the relevant public may believe that they come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 161 941. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 10 161 941 leads to the success of the opposition and to the rejection of the contested trade mark for all the 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) and the evidence of proof of use submitted by the opponent in relation to it.

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 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 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

Ric WASLEY

Marta GARCÍA COLLADO

Richard BIANCHI

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.