OPPOSITION No B 2 618 182

Cloud Ten Beauty Limited, 38 Woodvale, Carrickmacross Co. Monaghan, Ireland (opponent)

a g a i n s t

PaxLife GmbH & Co. KG, pct Potsdam Center of Technology David-Gilly-Straße 1, 14467 Potsdam, Germany (applicant), represented by Schweiger & Partners, Elsenheimer Straße 1, 80687 München, Germany (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 618 182 is partially upheld, namely for the following contested goods and services:

Class 9:        Computer software and computer programs; software applications for cellular phones, smartphones, PDAs and/or mobile web devices; mobile software applications; software for use by travellers in transit, including on board passenger transport vehicles, to enable connection between media devices, especially between handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, and entertainment systems; software for the operation of entertainment, advertising and/or shopping systems, especially during travel or passenger transportation; downloadable software in the nature of mobile applications to enable connection between media devices, especially between handheld devices such as cellular phones, smartphones, PDAs and/or mobile web devices, and entertainment systems on passenger transport vehicles; software and software applications to enable access, viewing and/or transmission of web links, videos, music and/or images via the Internet, local area networks and/or other communications networks; software for accessing information on global computer networks; interface software to allow access from handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, to other media devices, especially entertainment systems for use during travel or passenger transportation.

Class 35:        Advertising; provision of advertising space and/or time on interactive computer systems; electronic commerce services, namely providing information about products via electronic communication networks for advertising and sales purposes, including such services provided for use by travellers in transit, including on board passengers transport vehicles.

Class 38:        Telecommunications; providing user access to computer programs in data networks; transmission of data by satellite; providing user access by handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, to computer programs in data networks, especially entertainment systems for use by travellers in transit, including on board passengers transport vehicles; providing user access to computer programs in data networks by interface software.

Class 42:        Software development and/or implementation; software design; development of software applications for cellular phones, smartphones, PDAs and/or mobile web devices; development of interface software to allow access from handheld devices to other media devices, such as entertainment systems, especially for use by travellers in transit, including on board passenger transport vehicles; development, programming and/or implementation of software for the operation of entertainment, advertising and/or shopping systems, especially for use by travellers in transit, including on board passenger transport vehicles.

2.        European Union trade mark application No 14 484 083 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 484 083. The opposition is based on European Union trade mark registration No 10 826 576. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

1. The goods and services

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

Class 3:        Cosmetics, skincare preparations, toiletries, essential oils, hair care preparations; soaps; perfumery; eau de parfum; eau de toilette; bath oil; bath bubbles; bath beads; bath melts; bath powder; bath tablets; bath gel; body creme; body mist; body oil; dry oil spray; body scrub; body wash; shower lotion; shower gel; bath salts; cleanser; body and skin lotion; both and skin soaps; facial scrub; facial masks; face creams; skin toner; astringent not for medical purposes; eye gels not for medical purposes; eye cream; cosmetic and cosmetic treatments; shampoo; hair conditioner; hair gel; cologne; aftershave; aftershave moisturising lotion; shimmer lotion; shaving cream; shaving soap; talc; incense; essential oils for personal use; massage oils; dentrifices including toothpaste, mouthwash, cosmetic tooth whitening products, toothwhitening gels, toothwhitening creams, toothwhitening pastes, toothwhitening preparations; Cosmetics; blush; primer; non-medicated skin cleanser; skin concealer; tinted moisturiser; highlighter; bronzer; eyebrow pencils; eye liner pencils; lip pencils; anti-shine make-up; eye shadow pots; eye shadow; foundation; foundation; foundation liquid stick; lipstick; lip primer; lip gloss; lip treatment; lip exfoliant; loose facial powder; pressed facial powder; mascara; under eye brightener and non-medicated moisturiser; make-up; non-medicated toilet preparations; bath care products; preparations for the care and treatment of the skin, nails, body and hair; soaps; creams, lotions and butters, all for the skin, nails, body and hair; After Sun; sunscreens; hairstyling products; aromatherapy products; hair treatments; nail varnish; preparations for nail varnish removal; hair dyes and colorants; cosmetic preparations for use as slimming aids; slimming aids [cosmetic] other then for medicinal use; deodorants for personal use; kits and gift sets consisting wholly or principally of the afore-mentioned goods.; Make-up preparations; Grooming aids; Skin accessories for cosmetic purposes, namely ornaments, transfers, stickers for the face and body, stencils, false eyelashes; Make-up removing preparations; Make-up and care preparations for the body, the complexion, eyes (eyebrows, eyelashes, eyelids), mouth (in particular lips), nails, cheeks; Temporary tattoos (cosmetics).

Class 21:        Make-up brushes, compacts, cosmetic sponges, powder puffs and make-up bags; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); ceramics, glassware, porcelain and earthenware not included in other classes; Household or kitchen utensils and containers; bathroom glass holders; bathroom fittings; bathroom holders; bathroom towel-rings; bottle openers; oil cruets; cocktail stirrers; candle extinguishers; non-electric appliances for removing make-up, sugar bowls; trays; powder puffs; bottles; shaving brushes; crockery; coffeepots, non-electric, not of precious metal; boxes, bottle warmers, not electric; shoehorns, candlesticks; shoe brushes; nail brushes; toothbrushes; brushes (dishwashing-); baskets; fitted picnic baskets, including dishes; bread baskets; cocktail shakers; strainers; ice pails; mixing spoons [kitchen utensils]; scoops; bowls; decanters; soap dispensers; salad bowls; brooms; spatulas; spice racks; combs cases; lunch boxes; flasks; vegetable dishes; tailored covers for ironing boards; gloves for household use; egg cups; soap dishes; pitchers; vases; flower pots; plates; feather-dusters; powder compacts; knobs of porcelain; stands for shaving brushes; sponge holders; soap holders; coasters, not of paper and other than table linen; toilet paper holders; perfume sprayers and vaporisers; perfume burners; graters; thermal holders; coasters, coffee and tea sets; napkin rings; bread boards; carving boards; pot lids; cups; mugs; toilet utensils; tableware.

Class 35:        Online retail services offered via a global communication network featuring personal care products, cosmetics, toiletries, perfumery, bath and body products, skin care products and hair care products; online provision of information via a global communication network, regarding the selection and use of personal care products, cosmetics, toiletries, perfumery, bath and body products, skin care products, hair care products and beauty treatments, color analysis for make-up application and personal appearance; mail order services featuring personal care products, cosmetics, toiletries, perfumery, bath and body products, skin care products and hair care products; retail store services for the sale of personal care products, cosmetics, toiletries, perfumery, bath and body products, skin care products, hair care products and beauty treatments, home fragrance products; On-line trading services; The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase goods, namely furniture, home decorating and event/party related products, and accessories for all the aforesaid, by means of telecommunications including an Internet website; information in relation to the sale of goods; professional intermediation and consultancy services in relation to the sale of goods, advisory and consultancy services relating to all the aforesaid.; Retailing of personal care products, cosmetics, toiletries, perfumery, bath and body products, skin care products and hair care products; online provision of information via a global communication network, regarding the selection and use of personal care products, cosmetics, toiletries, perfumery, bath and body products, skin care products, hair care products and beauty treatments, color analysis for make-up application and personal appearance; mail order services featuring personal care products, cosmetics, toiletries, perfumery, bath and body products, skin care products and hair care products; retail store services for the sale of personal care products, cosmetics, toiletries, perfumery, bath and body products, skin care products, hair care products and beauty treatments, home fragrance products; Sales promotion for others and advertising in the field of promotion and sale of cosmetics, dissemination of advertising matter, distribution of samples, direct mail advertising, advertising, organising of exhibitions and competitions for commercial or advertising purposes; Business management consultancy, assistance and advising in the establishment of retail stores, all in the field of personal and beauty care products, personal care products and household products, cosmetics, fragrances, toiletries, creams and treatment products, shaving products, hair care products, nail polishes, make-up brushes and make-up bags, furniture and accessories, household products for dining, bed and bath, housewares and glass, paper goods, leather and bags; e-commerce services, namely offering for sale, selling and distributing articles of clothing, accessories, luggage, bed and bath products, mirrors and picture frames, goods of woods, cork, reed cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, Household or kitchen utensils and containers (not of precious metal or coated therewith) , combs and sponges, brushes (except paint brushes), brush making materials, articles for cleaning purposes, steelwool, unworked or semi- worked glass (except glass used in building) , glassware, porcelain and earthenware, Textiles, textile goods, bed and table covers, Clothing, footwear, headgear, Carpets, rugs, mats, matting, linoleum and other materials for covering existing floors, wall hangings (non- textile). Retail store services, available through computer communications and interactive television, featuring all of the goods aforesaid.; Advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; Social media strategy and marketing consultancy; Online advertising via a computer communications network; Presentation of goods on communications media, for retail purposes; Preparation of publicity publications; publicity publication services.

Class 38:        Telecommunications; communications via computer terminals, networks or the Internet; communications by mobile phones; communications over the Internet; Communications consultancy; computer communications for the transmission of information; computer-aided transmission of messages and images; electronic mail; communications via worldwide computer networks; telecommunications services, namely the electronic transmission of data and information; providing an online, interactive bulletin board for the transmission of messages among computer users concerning trading and the sale of goods and services via a global communications network; electronic transmission of data and information; providing user access to the Internet; providing telecommunications connections to the Internet or data bases; telecommunications gateway services; electronic communications services; mobile communications services; wireless communications services; provision of on-line communication services.

The contested goods and services are the following:

Class 9:        Computer software and computer programs; computer games and/or gambling software; software applications for cellular phones, smartphones, PDAs and/or mobile web devices; mobile software applications; software for use by travellers in transit, including on board passenger transport vehicles, to enable connection between media devices, especially between handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, and entertainment systems; software for the operation of entertainment, advertising and/or shopping systems, especially during travel or passenger transportation; downloadable software in the nature of mobile applications to enable connection between media devices, especially between handheld devices such as cellular phones, smartphones, PDAs and/or mobile web devices, and entertainment systems on passenger transport vehicles; software and software applications to enable access, viewing and/or transmission of web links, videos, music and/or images via the Internet, local area networks and/or other communications networks; software for accessing information on global computer networks; interface software to allow access from handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, to other media devices, especially entertainment systems for use during travel or passenger transportation.

Class 35:        Advertising; provision of advertising space and/or time on interactive computer systems; electronic commerce services, namely providing information about products via electronic communication networks for advertising and sales purposes, including such services provided for use by travellers in transit, including on board passengers transport vehicles.

Class 38:        Telecommunications; providing user access to computer programs in data networks; transmission of data by satellite; providing user access by handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, to computer programs in data networks, especially entertainment systems for use by travellers in transit, including on board passengers transport vehicles; providing user access to computer programs in data networks by interface software.

Class 41:        Entertainment; providing an online betting systems, including online betting systems on computer networks; providing on-line computer games; providing interactive games, gambling and/or entertainment software on entertainment, advertising and/or shopping systems, especially for use by travellers in transit, including on board passenger transport vehicles.

Class 42:        Software development and/or implementation; software design; development of software applications for cellular phones, smartphones, PDAs and/or mobile web devices; development of interface software to allow access from handheld devices to other media devices, such as entertainment systems, especially for use by travellers in transit, including on board passenger transport vehicles; development, programming and/or implementation of software for the operation of entertainment, advertising and/or shopping systems, especially for use by travellers in transit, including on board passenger transport vehicles; development of games and/or gambling software.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Before proceeding to the comparison, it is useful to describe the goods and services of the earlier mark.

In Class 3, the earlier mark essentially covers a range of cosmetics and toiletries. These goods are used for enhancing one’s appearance or personal care. They are offered for sale in drug stores, pharmacies, dedicated sections in department stores or supermarkets.

In Class 21, the earlier mark is registered for various household containers and utensils, ranging from articles for use with cosmetics to articles for cleaning. These goods are intended for the convenience of the user to do chores and organise things at home, prepare and store food, or for personal beauty-care treatments. They are usually sold in specialised outlets or offered in dedicated sections in department stores or supermarkets (for instance in home improvement supplies, in drug stores along with cosmetics etc.).    

In Class 35, the earlier mark is registered for various forms of retail services featuring specific goods (essentially personal care products and cosmetics, furniture, furnishings and home décor, party goods, clothing, footwear, headgear and accessories, luggage, household containers and utensils, textile goods). It is noted that similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical.

In addition, the earlier mark covers various management assistance services, the provision of consumer information, advertising and marketing etc., aimed at supporting other undertakings to do or improve their business. They are provided by specialised agencies and are mainly directed at a professional public.

In Class 38, the earlier mark covers a range of telecommunication services enabling remote communication between people or computers, and providing access to various networks. Such services mainly originate from telecommunication networks operators.

Contested goods in Class 9

Since the 1990s the boundary between telecommunications equipment and IT hardware/software has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecoms data. Equipment used for purposes of telecommunication, like mobile phones, smart phones, modems, routers etc. is also considered to cover the telecommunications control software that must be in place to successfully support telecommunications activities. Any software that provides the ability to perform telecommunication activities operations can be considered telecommunications control software.

The contested computer software and computer programs; software applications for cellular phones, smartphones, PDAs and/or mobile web devices; mobile software applications; software for use by travellers in transit, including on board passenger transport vehicles, to enable connection between media devices, especially between handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, and entertainment systems; software for the operation of entertainment, advertising and/or shopping systems, especially during travel or passenger transportation; downloadable software in the nature of mobile applications to enable connection between media devices, especially between handheld devices such as cellular phones, smartphones, PDAs and/or mobile web devices, and entertainment systems on passenger transport vehicles; software and software applications to enable access, viewing and/or transmission of web links, videos, music and/or images via the Internet, local area networks and/or other communications networks; software for accessing information on global computer networks; interface software to allow access from handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, to other media devices, especially entertainment systems for use during travel or passenger transportation are directly or potentially intended for enabling the connection between communication devices, for the operation of IT-based systems with any given subject matter, for the provision of access to, or the transmission of, data on communication networks etc.  

Clearly, a link exists between the abovementioned contested goods and the opponent’s telecommunications in Class 38. These goods and services are similar given their complementary character; although their nature is different, their purpose and distribution channels are the same (12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26).

However, the same considerations do not apply to the remaining contested goods in this class, namely computer games and/or gambling software. The aim of these goods is to provide the means for entertainment. Therefore, they cannot be considered telecommunications control software, unlike the other contested goods in this class. Even though computer games or gambling software can be distributed over communication networks that does not lead to the conclusion that the contested goods and the opponent’s telecommunications are similar. The mere coincidence in the relevant public is insufficient. Account must be taken of the diverging natures and purposes of these goods and services. Moreover, they do not originate from the same undertakings and are not complementary.  

The contested computer games and/or gambling software have no relevant commonalities with any other of the opponent’s goods or services, either. Clearly different by natures and purposes, they originate from different manufacturers or providers and move through different commercial channels. Furthermore, they are neither complementary nor in competition.

Therefore, the contested computer games and/or gambling software are dissimilar to all of the opponent’s goods and services in Classes 3, 21, 35 and 38.

 

Contested services in Class 35

The contested advertising includes, as a broader category, the opponent’s online advertising via a computer communications network. 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 provision of advertising space and/or time on interactive computer systems overlaps with the opponent’s online advertising via a computer communications network, insofar as both categories include provision of advertising services online. Therefore, they are identical.

The term ‘namely’, used in the contested electronic commerce services, namely providing information about products via electronic communication networks for advertising and sales purposes, including such services provided for use by travellers in transit, including on board passengers transport vehicles to show the relationship of individual services with the broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

In the light of this interpretation, the abovementioned contested services overlap with the opponent’s presentation of goods on communications media, for retail purposes. They are identical.

Contested services in Class 38

Telecommunications are identically contained in both lists of services.

The contested providing user access to computer programs in data networks; transmission of data by satellite; providing user access by handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, to computer programs in data networks, especially entertainment systems for use by travellers in transit, including on board passengers transport vehicles; providing user access to computer programs in data networks by interface software are included in the broader category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 41

The contested services in this class are provided to others for recreational purposes or as a pastime. They are created and offered on the market by specialised undertakings dealing in gambling, gaming or entertainment in general.

Although it is true that the contested entertainment services can be distributed online or over other computer networks, which points to a certain connection with the opponent’s telecommunications services that, however, does not make these services similar. Their different natures and purposes (entertainment vs. communication, data transmission) preclude from a finding of similarity. In the same vein, the factor that an e-commerce website can offer both online shopping and interactive games does not mean that these services are similar, as the mere coincidence in the relevant public and distribution channels is insufficient in itself to lead to a finding of similarity.

The contested services in this class have no relevant commonalities with any other of the opponent’s goods or services, either. Clearly different by natures and purposes, they originate from different manufacturers or providers and move over different commercial channels. Furthermore, they are neither complementary nor in competition.

Therefore, the contested entertainment; providing an online betting system, including online betting systems on computer networks; providing on-line computer games; providing interactive games, gambling and/or entertainment software on entertainment, advertising and/or shopping systems, especially for use by travellers in transit, including on board passenger transport vehicles are dissimilar to all of the opponent’s goods and services in Classes 3, 21, 35 and 38.

Contested services in Class 42

The contested software development and/or implementation; software design; development of software applications for cellular phones, smartphones, PDAs and/or mobile web devices; development of interface software to allow access from handheld devices to other media devices, such as entertainment systems, especially for use by travellers in transit, including on board passenger transport vehicles; development, programming and/or implementation of software for the operation of entertainment, advertising and/or shopping systems, especially for use by travellers in transit, including on board passenger transport vehicles refer to computer programming services that are directly or potentially intended for enabling telecommunication activities, in terms of allowing access to data networks or connection between various devices, or serving as interface between the telecommunication equipment and the user. These services have the same purpose as the opponent’s telecommunications in Class 38. Moreover, they are indispensable for the functioning of telecommunication operations. The contested services are distributed over the same channels and are usually offered under the control of the same entity. Therefore, they are similar.

However, the above considerations do not apply to the rest of the contested services in this class, namely development of games and/or gambling software. Essentially, the aim of these services is to carry out the programming jobs required for the creation of entertainment content. They do not concern telecommunications control software, unlike the other contested services in this class. Even though the product of the contested services can be distributed over communication networks that does not lead to the conclusion that development of games and/or gambling software and the opponent’s telecommunications are similar. The contested services are not intended for the general public, but are rather directed at undertakings in the entertainment industry which then provide the gaming or gambling services to the public. These services do not originate from the same providers.  

The contested development of games and/or gambling software has no relevant commonalities with any other of the opponent’s goods or services, either. Clearly different by natures and purposes, they originate from different manufacturers or providers and move through different commercial channels. Furthermore, they are neither complementary nor in competition.

Therefore, the contested development of games and/or gambling software is dissimilar to all of the opponent’s goods and services in Classes 3, 21, 35 and 38.

Remarks on the comparison of goods and services

The applicant argues that the goods and services covered by the marks at issue are different and that there is no commercial overlap between them, given that the applicant is a software start-up that has developed an application allowing airplane passengers to remotely control the in-flight entertainment system, whilst the opponent is a retailer of cosmetics.

The comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

Although some of the contested goods and services in Classes 9 and 42 are defined as being designed for a specific application, for instance for use by travellers in transit, including on board passenger transport vehicles, the opponent’s services that have been found similar, namely telecommunications in Class 38, are defined in a broad manner. The foregoing comparison of goods and services is based on the relevant factors established by case-law, taking into account the usual circumstances that are expected for the given categories of goods and services covered by the marks at issue. Therefore, the applicant’s arguments must be set aside.

2. The signs

CLOUD 10	CLOUD10
Earlier trade mark	Contested sign

There is identity between the sign and the trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54).

In the present case, the sole difference between the signs is the space appearing in the earlier mark between the letters, ‘CLOUD’, and the number, ‘10’. Otherwise, both word marks are completely identical as a whole. Irrespective of whether the sign contains a space or not, on all relevant levels of comparison there would be a natural separation between ‘CLOUD’ and ‘10’, since the former is a verbal element and the latter is a numeral. Therefore, the presence of the space does not change how the sign is perceived.

Bearing in mind that the average consumer does not normally indulge in an analytical examination of a trade mark but perceives it in its entirety, the difference between the signs at issue is an insignificant one, which would be perceived by a reasonably observant consumer only upon examining the signs side by side.

It is concluded that the signs are identical.

3. Global assessment and conclusion

The signs are identical. The following contested services are identical to the ones covered by the earlier mark:

Class 35:        Advertising; provision of advertising space and/or time on interactive computer systems; electronic commerce services, namely providing information about products via electronic communication networks for advertising and sales purposes, including such services provided for use by travellers in transit, including on board passengers transport vehicles.

Class 38:        Telecommunications; providing user access to computer programs in data networks; transmission of data by satellite; providing user access by handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, to computer programs in data networks, especially entertainment systems for use by travellers in transit, including on board passengers transport vehicles; providing user access to computer programs in data networks by interface software.

Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these services.

The following contested goods and services are similar to those covered by the earlier mark:

Class 9:        Computer software and computer programs; software applications for cellular phones, smartphones, PDAs and/or mobile web devices; mobile software applications; software for use by travellers in transit, including on board passenger transport vehicles, to enable connection between media devices, especially between handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, and entertainment systems; software for the operation of entertainment, advertising and/or shopping systems, especially during travel or passenger transportation; downloadable software in the nature of mobile applications to enable connection between media devices, especially between handheld devices such as cellular phones, smartphones, PDAs and/or mobile web devices, and entertainment systems on passenger transport vehicles; software and software applications to enable access, viewing and/or transmission of web links, videos, music and/or images via the Internet, local area networks and/or other communications networks; software for accessing information on global computer networks; interface software to allow access from handheld devices, such as cellular phones, smartphones, PDAs and/or mobile web devices, to other media devices, especially entertainment systems for use during travel or passenger transportation.

Class 42:        Software development and/or implementation; software design; development of software applications for cellular phones, smartphones, PDAs and/or mobile web devices; development of interface software to allow access from handheld devices to other media devices, such as entertainment systems, especially for use by travellers in transit, including on board passenger transport vehicles; development, programming and/or implementation of software for the operation of entertainment, advertising and/or shopping systems, especially for use by travellers in transit, including on board passenger transport vehicles.

Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods and services.

The rest of the contested goods and services are dissimilar. As the similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michele M. BENEDETTI ALOISI

Solveiga BIEZA

Julie GOUTARD

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.