OPPOSITION No B 2 367 764

D.Velop AG, Schildarpstr. 6-8, 48712 Gescher, Germany (opponent), represented by Llr Legerlotzlaschet Rechtsanwälte Gbr, Mevissenstr. 15, 50668 Köln, Germany (professional representative)

a g a i n s t

Droga5 LLC, 400 Lafayette 5th Floor, New York, New York 10003, United States of America (applicant), represented by Lewis Silkin Llp, 5 Chancery Lane, Clifford's Inn, London EC4A 1BL, United Kingdom (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 367 764 is partially upheld, namely for the following contested services:

Class 35:                 Advertising and marketing services; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital, and on-line medium; post-production editing services for video and audio commercials; production of radio and television commercials; arranging the display and performance of radio and television commercials (buying time and space for advertisements to appear in media); sound, video and ancillary production and post production services to the advertising industries.

Class 41:                 Provision of online electronic publications, digital music and digital entertainment (non-downloadable); exhibition services; Publishing services.

Class 42:        Graphic design services; commercial art design; design and development of multimedia products; website design services; graphic illustration services; packaging design; graphic art design services.

2.        European Union trade mark application No 12 404 869 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 404 869. The opposition is based on, inter alia, German trade mark registration No 30 205 315. 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 German trade mark registration No 30 205 315.

1. The goods and services

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

Class 9:         Software; electric apparatus and instruments (included in class 9); apparatus for the recording transmission and reproduction of sound or images; data processing equipment and computers and parts therefor, computer peripheral devices, in particular keyboards, monitors, printers, drives, interfaces, cards, scanners, optical storage devices (included in class 9); machine-readable data carriers of all kinds.

Class 16:         Printing materials; folders for papers, archive bags.

Class 35:         Business consultancy, in particular with regard to computing and the optimisation of business working procedures; organization consultancy; professional business consulting; marketing; consultancy with regard to the archiving of data and archive planning.

Class 38:        Database services including operating databases, in particular provision of archived data for authorised persons; leasing database access time.

Class 41:         Providing of training and further training; conducting training courses in connection with computers, computer programs, computer peripheral devices and computer ancillary equipment, and in connection with the archiving of data and archive management; Archiving, archive administration, supply of archives.

Class 42:         Data transfer for archiving and information purposes; Creation of programs for data processing; technical consultancy, in particular with regard to the archiving of data and archive planning; Transmission of advertising via internet; rental of webservers and providing of memory space on the Internet; design and creation of Internet presentations, homepages, Internet applications and e-commerce applications; Internet and IT security consultancy; consultancy in connection.

The contested services are the following:

Class 35:         Advertising and marketing services; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital, and on-line medium; post-production editing services for video and audio commercials; production of radio and television commercials; arranging the display and performance of radio and television commercials (buying time and space for advertisements to appear in media); sound, video and ancillary production and post production services to the advertising industries.

Class 41:         Sound, video and ancillary production and post production services to the motion picture, video, broadcast, satellite, cable and television industries; music recording; sound editing and enhancement; mixing of dialogue, music, sound effects, dialogue and narration; automated dialogue replacement; recording live sound effects; audio post-production, audio playback and augmentation; looping/foreign language dubbing and recording; video post-production, audio post-production; adding visual effects and graphics to video tape, audio tape, digital media and film; mastering, editing, augmenting, restoring, converting and reformatting of film, digital media and video tape; film, digital media and video tape editing; CD, DVD and electronic media mastering; production and special effects for advertisements, films and television; publishing services; provision of online electronic publications, digital music and digital entertainment (non-downloadable); exhibition services.

Class 42:         Graphic design services; commercial art design; design and development of multimedia products; website design services; graphic illustration services; packaging design; graphic art design services.

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

The terms ‘in particular’, ‘including’, used in the  lists of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they  introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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

Contested services in Class 35

The contested Advertising and marketing services; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital, and on-line medium; arranging the display and performance of radio and television commercials (buying time and space for advertisements to appear in media);  are various type of advertising and marketing services  providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services overlap with the opponent’s marketing services, which have all the same characteristics. Therefore, they are identical.

The contested post-production editing services for video and audio commercials; sound, video and ancillary production and post production services to the advertising industries;  production of radio and television commercials are technical services dealing with post production audio/video editing of advertising materials. These contested services are complementary to the opponent’s marketing services, despite having a different nature and methods of use. The services coincide in purpose, i.e, providing advertisements. The services can have the same origins, distribution channels and consumers since most of the advertising agencies employ their own team of persons with such specific technical skills. The services are similar to a low degree.

Contested services in Class 41

The contested provision of online electronic publications, digital music and digital entertainment (non-downloadable) are similar to the opponent´s Providing of training and further training as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested exhibition services can have similar purpose as the opponent’s marketing in Class 35, since marketing can also entail organising exhibitions for commercial purposes. The services can have the same purpose and users. The services are similar to a low degree.

Publishing services are similar to opponent’s Software as they have the same purpose. They can coincide in producer and end user.

The contested Sound, video and ancillary production and post production services to the motion picture, video, broadcast, satellite, cable and television industries; music recording; sound editing and enhancement; mixing of dialogue, music, sound effects, dialogue and narration; automated dialogue replacement; recording live sound effects; audio post-production, audio playback and augmentation; looping/foreign language dubbing and recording; video post-production, audio post-production; adding visual effects and graphics to video tape, audio tape, digital media and film; mastering, editing, augmenting, restoring, converting and reformatting of film, digital media and video tape; film, digital media and video tape editing; CD, DVD and electronic media mastering; production and special effects for advertisements, films and television are technical services all related to producing, editing enhancing the quality of various types of media content directed mainly at television industries. These are very specific services directed at a very specific industry. These services do not coincide with the opponent’s marketing as they have different nature, purpose and methods of use. The services have different origins, distribution channels and consumers. The services are dissimilar, and they are also dissimilar to all other goods and services of the opponent for all the abovementioned reasons.

Contested services in Class 42

The contested Graphic design services; commercial art design; design and development of multimedia products; website design services; graphic illustration services; packaging design; graphic art design services are all design services in different fields and using different media. These services coincide in nature, purpose and methods of use with the opponent’s design and creation of Internet presentations, homepages, Internet applications and e-commerce applications, that are also design services. The services can have the same origins, distribution channels and users. The services are similar.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical or similar to various degrees are directed mostly at customers with specific professional knowledge or expertise.

The degree of attention is average.  

3. The signs

d.3	D5
Earlier trade mark	Contested sign

The relevant territory is Germany.        

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 elements in the word marks have no meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs coincide in their first letters D. They differ in the following punctuation mark of the earlier sign and in the numbers three and five respectively.  

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent 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.

5. Global assessment, other arguments and conclusion

The services have been found to be partially identical, partially similar to various degrees and partially dissimilar. The similarities and dissimilarities between the signs have been established.

The signs have been found to be similar to the extent that they share the letters D in their beginning.  The signs have a similar setup, namely that they contain a letter D followed by a single number. The marks under comparison are confusingly similar for the consumer from an aural and visual point of view. The differentiating numbers are placed at the end of the sign. The marks can be easily mistaken by public when seen as the similarities are not counterbalanced by any specific meaning that would help the consumers to distinguish between the marks. 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).

Based on the principle of imperfect recollection, it is considered that the similarities between the signs established above are sufficient to cause at least part of the public to believe that the conflicting services, which are identical and similar to various degrees, come from the same undertaking or economically linked undertakings. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s  German trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar, including similar to a low degree, to those of the earlier trade mark.

The rest of the contested services are dissimilar. As 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 3 777 018 for classes 9, 16, 35, 38, 41, 42.
• European Union trade mark registration No 3 739 844 ‘d.velop’ for classes 9, 16, 35, 38, 41, 42.
• European Union trade mark registration No 8 334 121 ‘d.ecs’ for classes 9, 16, 35, 38, 41, 42.
• German trade mark registration No 39 626 474   for classes 9, 37, 41, 42.
• German trade mark registration No 39 626 810 ‘d.3’ for classes 9, 37, 41, 42.

Since the earlier DE No 39 626 810 is identical to the one which has been compared and covers similar scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. The class 37 services (Repair and maintenance of products of electrical engineering and computers and computer accessories and computer peripherals) are dissimilar, on all aspects of Canon criteria, to the contested services. Therefore, no likelihood of confusion exists with respect to those services.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements/additional words such as ‘.velop’ or ‘.ecs’ or have different device elements, which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the services. The class 37 services (Repair and maintenance of products of electrical engineering and computers and computer accessories and computer peripherals) are dissimilar, on all aspects of Canon criteria, to the contested services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DINU

Erkki MÜNTER

Irina SOTIROVA

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.