OPPOSITION No B 2 655 903
MPDV Mikrolab GmbH, Römerring 1, 74821 Mosbach, Germany (opponent), represented by Mas & P: Miess Altherr Sibinger und Partner Rechtsanwälte Partnerschaftsgesellschaft, Kaiserring 48-50, 68161 Mannheim, Germany (professional representative)
a g a i n s t
S.D.I. – Automazione Industriale – S.p.A., Via Edison 10, 20090 Trezzano Sul Naviglio, Italy (applicant), represented by Società Italiana Brevetti S.P.A., Via Carducci 8, 20123 Milano, Italy (professional representative).
On 28/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 655 903 is partially upheld, namely for the following contested goods and services
Class 9: Computer hardware and computer software; firmware; Computers; Recorded computer programs; Computer programs (downloadable); Computers and computer hardware; Monitors [computer programs]; Computer operating systems; Data processing equipment; Chips (integrated circuit); Monitors [computer hardware]; Hardware and software products; data storage controls and apparatus; Remote data processing apparatus; publication in electronic form supplied on line from data bases and from facilities provided on the internet including web pages and websites; Electronic publications, downloadable; publications, newsletters, magazines, pamphlets and leaflets, all in electronic form downloadable from the Internet, telecommunications networks or any other global computer network including wireless, cable or satellite; printed matter, pamphlets, leaflets, all in digital or electronic format; pre-recorded DVDs, CD ROM' and diskettes; electronic publications provided over a mobile telecommunications network; downloadable vouchers and coupons; electronic memory or microprocessor cards, all being vouchers or coupons; Remote control software; Software for the electric power sector (EMS, DMS); Management and remote control software intended for the gas and water sector; Computer software; Software recorded on electronic chips; computer software for the facilitation and operation of business systems including business systems via the internet the internet and worldwide web; Computer software for business planning, monitoring, analysis, management and productivity; software for network security, identity management, and network management; software platforms for network security; software for network traffic management and network-based storage; software in the nature of a database and a search engine for database content; software for grid computing including software as a service (saas); computer software especially for data acquisition, data transmission and data analysis in energy supply networks; Computer software to enable creating, editing, uploading, posting, displaying, tagging, blogging, sharing or otherwise providing data including images, graphics, sound, text or audio-visual information via the Internet or other communications network; Parts and accessories for all aforesaid goods; Data acquisition software and Analysis, configuration and diagnosis of data; Software for remote control, remote maintenance and remote monitoring; Management programs for remote alarms (telealarms); SCADA systems; Distributed control systems; SCADA-type control systems and industrial control systems in LAN or WAN environments; Computer databases; Databases (electronic); computer data bases located on a global computer network, the Internet, or via wireless, cable or satellite networks;; SCADA systems; Distributed control systems; SCADA-type control systems and industrial control systems in LAN or WAN environments; Computer databases; Databases (electronic); computer data bases located on a global computer network, the Internet, or via wireless, cable or satellite networks; magnetic discs, magnetic cards and other magnetic media; Data storage media.
Class 35: Marketing of hardware and application software in the field of automation, control and remote control systems; Marketing of hardware and software products and devices for automation, control and remote control in the context of functional safety; reviews of Software Defined Networking (SDN), network functional virtualization, and network virtualization users and projects for commercial purposes; business consultation and advisory services in the fields of computer hardware, computer software and computer network system design; business management consulting services and business management and consulting services relating to a computer system that integrates natural language processing (NLP),computational linguistics (CL), machine learning (ML), and information retrieval (IR), including text analysis, pattern recognition and image analysis and which is capable of understanding general human queries and formulating responses; data processing services and cloud-based business services, namely, business consultation services via cloud computing networks; business consulting services in the field of software networking, network functional virtualization, and network virtualization; business consulting with relation to strategy, technology deployment, sales, and business processes; Consultancy and advisory services relating to the aforementioned services; information services in the field of energy efficiency; consulting with relation to strategy, technology deployment, sales, and business processes in the field of power storage systems; all included in Int Class 35; Customer relationship management; electronic data processing for third parties; demand-side management, namely, management of energy consumption by electrical appliances; customer service, namely, responding to customer inquiries for others in the fields of telecommunications, computer networking, computer hardware and software and technology; development services; importing and exporting of goods of others; Import-export agencies; arranging and conducting trade show exhibitions in the fields of computers, computer services, and information technology; arranging and conducting trade show exhibitions in the field of electronic business transactions via a global computer network; arranging and conducting trade show exhibitions in the field of a computer that integrates natural language processing (NLP), computational linguistics (CL),machine learning (ML), and information retrieval (IR), including text analysis, pattern recognition and image analysis and which is capable of understanding general human queries and formulating responses.
Class 37: Installation, maintenance and repair of software and hardware and equipment relating to installations and systems for automation, control and remote control; Installation, maintenance and repair of hardware and software products, devices for automation, control and remote control in the context of functional safety.
Class 38: Telecommunications; Transmission of data, in particular via global computer networks; Arranging access to computer databases; Providing access to a global computer network; Message sending; Electronic messaging; Communication via networks; Portal services relating to automatic meter reading, utilities, gas, energy, energy consumption, water, flowable fluids and meter asset management; Internet portal services; Telecommunication services; Mobile telephone communication services; Telecommunication gateway services; Electronic transmission of data (including images, graphics, sound, text or audio-visual data), messages and documents; Email and instant messaging services; broadcasting services, namely, transmitting, uploading, receiving, sharing, posting, editing, displaying, playing, storing, organising, or otherwise providing electronic media or information over the Internet or other communications networks, including wireless, cable or satellite; transmission of audio, video and electronic communications, documents, messages, voices, text, sound, images, photographs and data; uploading data including images, graphics, sound, text or audio-visual information via the Internet or other communications networks including wireless, cable or satellite for educational and entertainment purposes; Linking to websites of others; editing, posting, displaying, tagging, blogging, or sharing data including images, graphics, sound, text or other audio-visual information via the Internet or other communications network including wireless, cable or satellite for educational purposes; Telecommunications and data transmission using hardware and software products, devices for automation, control and remote control in the context of functional safety; Information, advisory and consultancy services relating to all of the aforesaid services; all relating to smart metering systems.
Class 42: Computer software design; Data recovery services; Computer system monitoring services; Design of computer systems; Computer programming; Engineering services; Design and development of computer hardware and software; Electronic archiving of data, in particular long-term storage; All the aforesaid services in particular for the monitoring and control of energy generating installations; Computer services, computer programming; Computer programming for others; Interconnection of hardware and software, namely integration of computer systems and computer networks; downloading, installation and maintenance of security software applications, software applications for screening and blocking unwanted e-mail, and software applications for parental controls of Internet activities provided by communication devices, e-mail, and on-line via the Internet; computer services, namely, monitoring, regulating, and analyzing computer and internet usage for others, and generating reports regarding same; Computer services, namely providing of information relating to the encoding and authentication of electronic data, namely authentication of emails and documents; encryption and decryption of data and communications; computer services, namely, integration of private and public cloud computing environments; computer services, namely cloud hosting provider services; computer services, namely, platform as a service (PAAS) featuring computer software platforms for use in computer network management and monitoring, for alerting and reporting on computer network status, for computer network configuration backup, for updating computer network firmware, for assessment and inventory of networked devices, and for monitoring and management of security, wireless, voice and video networks; Computer services, namely remote and on-site management of virtual private or public clouds (VPCs), VPC networks, VPC environments, VPC infrastructures, thin clients, cloud clients, telephones, personal digital assistants (PDAs), VOIP systems; Computer services, namely remote and on-site management of tablet computers, laptop computers, desktop computers, servers, printers, routers, storage and security devices, operating systems, virtual servers, mail servers, web servers, application servers, storage and printer servers, servers for data centres, storage servers, remote access servers, social media servers, managed services; Remote management and surveillance, help desks, network operations centres (NOCs), business continuity, secure off-site or remote copying, business applications, enterprise resource planning (ERP), anti-virus, anti-spyware and anti-malware systems, for others; Computer systems integration services; design of computer hardware, computer software, web sites and computer network system for others; Installation, maintenance and updating of computer software; Customization of computer hardware and software; Computer and network systems analysis; integration of computer systems and networks, computer programming for others all for use in commercial interactions over global computer networks; computer software development, computer programming and maintenance of computer software in the field of energy usage management and energy efficiency; Computer software and hardware testing services; Study of technical projects in relation to hardware and software, namely studies and analysis of computer systems; Computer software and hardware testing services, namely, testing of computer software and computers and servers; Design, maintenance and up-dating of computer software; Computer software and hardware design for others, and consultation services in the field of computers; Computer systems design services for others; design of computer hardware, computer software, web sites and computer network system for others; Design and development of computer systems and hardware and software; Design and development of computer systems, namely hardware and software for unified communications; software development and product development for others in the fields of computer software for integrated circuit cards, chip cards, chip card reading devices, namely, smart card readers, smart card terminals, radio frequency identification (RFID) readers and biometric readers; design for others in the field of computer networks, software, and engineering for the network virtualization and software defined networking; computer network design and computer software design for the network virtualization and the Software Defined Networking (SDN); providing secure remote access to sensitive data by select individuals or groups by means of a computer network; Development and updating of computer software for others; creation of data-processing software programs for others; Data mining services; rental services of electric and electronic apparatus, instruments and implements; rental services of electric and electronic apparatus, instruments and implements; repair services of computer software program and web site; Computer data recovery; Application service providers, including speech recognition software, automated call software, software for creating, implementing and managing voice activation systems, for processing transactions and classifying, navigating, searching for, retrieving, displaying and distributing information in databases and on computer networks; Application service providers, including software for analysing the effectiveness of speech recognition software, automated call software and software for creating, implementing and managing voice activation systems, for the purposes of processing transactions and classifying, navigating, searching for, retrieving, displaying and distributing information in databases and on computer networks, included in class 42; Design and development of hardware and software relating to devices for automation, control and remote control in the context of functional safety; Machine condition monitoring; Technical consultancy; Technical project studies; Technical project management in the field of electronic data processing; Scientific and technological services and research and design relating thereto; Technical consultation in the field of electrical power generation and storage systems; technical computer consulting services and technical consultation for computer programming and computer hardware; Energy monitoring services for others, namely, viewing or recording the timing or level of use and control of electricity used by selected devices; design of home and business electric energy control systems for others and engineering services in the field of computerized temperature, fire, safety, security and light control, energy usage management monitoring; ; technical support services, namely, deployment, migration and updating of software applications; technical consulting services relating to the search for active ingredients; Access and leasing of access time to databases connected to local and global computer networks, access to local and global computer networks for transmitting and disseminating information of all kinds, offering of computer programs via local and global computer networks, temporary use of software programs for managing non-downloadable databases via global computer networks; providing temporary use of non-downloadable computer software for recognizing images; providing temporary use of non-downloadable computer software for providing detailed information on a wide range of subjects that appear in photos taken with mobile device; providing temporary use of non-downloadable computer software for biometric systems for the identification and authentication of persons fingerprint and/or finger vein authentication system; providing on-line non-downloadable software in the field of business process management for use by manufacturers; providing on-line non-downloadable software in the field of data management software, namely, database management software for organizing, synthesizing and collecting data from the manufacturing plant floor for use by manufacturers; providing on-line non-downloadable software in the field of manufacturing plant floor management, namely, software used to integrate and configure the existing manufacturing execution system (MES) data of a manufacturing plant with upgraded plant floor management software; providing on-line non-downloadable software in the field of manufacturing plant floor management, namely, software used to identify and evaluate the root causes of process variation that provides real time information to plant floor personnel to avoid the manufacture of defective products; providing on-line non-downloadable software in the field of manufacturing plant floor management in the fields of plant efficiency, plant assessment, plant optimization, and virtual plant modeling; cloud computing services featuring software for use in database management; remote and on-site management of cloud computing systems and applications for others; cloud computing featuring software for use in database management, security management, analitical computing, data processing, and business analytics; rental services of computers and electronic measuring apparatus; hosting of digital content on the Internet and other computer and electronic communication networks; data automation services using proprietary software to evaluate, analyze and collect service data, including such services in the field of data security, data traffic and communication networks, providing on-demand resource allocation for computer systems including access to virtual servers and virtual machines; application service provider (ASP) featuring software to enable uploading, posting, showing, displaying, sharing or otherwise providing electronic media or information over the Internet and other communication networks; a web-based service featuring technology that enables users to view and manage data from networks of wired and wireless sensors and RFID tags; providing information featuring a wide variety of topics of general interest to consuming public, business and private institutions via web sites on global computer networks; Computer software consultancy; Consultancy in relation to computers, namely consultancy in relation to research and development in the computer sector; scientific and industrial research, namely, research and development of new products, biological research, technical research in the field of a computer system that integrates natural language processing (NLP), computational linguistics (CL), machine learning (ML), and information retrieval (IR), including text analysis, pattern recognition and image analysis and which is capable of understanding general human queries and formulating responses, and scientific research for medical purpose; consultancy in the field of design of computer programs for unified communication services; consultancy in the field of ICT infrastructures; consulting services in the field of energy management; Consultancy in the field of computers; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Computer consultation in the field of computer security; computer consultation services of information and communication technology (ICT) specialists for facilitating of data traffic and for providing access to networks and data bases; consulting services in the fields of computer network support, the use and operation of computer software, systems analysis and integration, installation of computer networks, computer security and the planning, design, and optimization of computer network systems; consulting services in the field of design of computer programs for cloud computing; consulting services in the field of design of computer programs for computer-based information systems for business; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; consulting services in the field of hosting computer software applications; technical consulting in the field of data center security; Consulting services in the field of cloud computing; consulting in the field of infrastructure-as-a-service (SaaS) cloud computing technology, software-as-a-service (SaaS) cloud computing technology, platform-as-a-service (PaaS) cloud computing technology, and software-as-a-service (SaaS) cloud computing technology; providing others with information relating to computer hardware and computer software; providing others with the above information via local and global computer information networks; Providing of information in relation to computer networks by means of computer networks, computer networks, computer systems, computers and services relating to network security and cloud computing; providing on-line information in the field of technical information relating to computer software; providing others with information in the field of computer hardware and computer software; IT services; services relating to the technical supervision and inspection of electronic apparatus and instruments including electronic computers; services in the field of the technical technology supervision and inspection of electronic apparatus ar1d instruments in the nature of electronic computers; troubleshooting of computer hardware and software problems via telephone, e-mail, in person and local and global computer information networks; Computer services, namely technological support, namely troubleshooting and repair of faults in the form of diagnosing hardware and software problems for a computer system incorporating neuro-linguistic programming (NLP), computational linguistics (LC), machine learning (ML) and information retrieval (IR), including analysis of texts, identification of models and image analysis, and systems able to understand generic questions and formulate responses.
2. European Union trade mark application No 14 960 843 is rejected for all the above goods and services. It may proceed for the remaining goods.
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 14 960 843 for the figurative mark . The opposition is based on European trade mark registration No 12 250 197 for the word mark ‘SIS’. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer hardware and computer software, computer programs (stored or downloadable), computer operating program (stored), computer peripherals, data processing equipment, electronic publications (downloadable); Interfaces for computers.
Class 35: Professional business consultancy, organisation consultancy, personnel management consultancy, business management consultancy; Efficiency experts; Marketing, market research; Opinion polling; Public relations services; Employment agencies, personnel recruitment; Data processing for others; Updating and maintenance of data and computer databases, computerised file management, organisational project management in the field of electronic data processing, systematisation and collating of data in computer databases.
Class 42: Development, creation, improvement, maintenance and updating of programs for word processing, data processing, operational data capture and process control; Technical applications consultancy with regard to computers and computer programs, in particular for the capture and processing of business data in the fields of manufacturing, personnel and quality control; consultancy in the area of information technology (IT); Internet provider services, namely creating programs for solving sectoral problems on the Internet; Providing or rental of electronic memory space on the Internet (webspace); Computer programming, technical project planning, technical project management in the field of electronic data processing; Surveying.
The contested goods and services are the following:
Class 9: Remote control software; SCADA systems; Distributed control systems; Software for the electric power sector (EMS, DMS); Management and remote control software intended for the gas and water sector; SCADA-type control systems and industrial control systems in LAN or WAN environments; Electric and electronic apparatus and instruments, including battery chargers, apparatus for storing and providing energy; Accumulators and batteries; Computer software; Chips (integrated circuit); Software recorded on electronic chips; computer software for the facilitation and operation of business systems including business systems via the internet the internet and worldwide web; Computer software for business planning, monitoring, analysis, management and productivity; firmware, software for network security, identity management, and network management; software platforms for network security; software for network traffic management and network-based storage; software in the nature of a database and a search engine for database content; software for grid computing including software as a service (saas); Automatic meter reading devices, water meters, calorimeters; Electricity measuring instruments; electrical and electronic apparatus and instruments for telecontrol, telecounting and telemetering, including apparatus for reading, billing, collecting and registration of energy consumption data; Energy monitoring devices; data acquisition and transmission equipment for automatic meter reading devices; computer software especially for data acquisition, data transmission and data analysis in energy supply networks; instruments for the processing of data for automatic meter reading devices; telemetry systems for utilities, gas, energy and flowable fluids; Computer hardware and computer software; publication in electronic form supplied on line from data bases and from facilities provided on the internet including web pages and websites; Electronic publications, downloadable; publications, newsletters, magazines, pamphlets and leaflets, all in electronic form downloadable from the Internet, telecommunications networks or any other global computer network including wireless, cable or satellite; printed matter, pamphlets, leaflets, all in digital or electronic format; pre-recorded DVDs, CD ROM' and diskettes; magnetic discs, magnetic cards and other magnetic media; electronic publications provided over a mobile telecommunications network; Data storage media; Computer databases; Databases (electronic); computer data bases located on a global computer network, the Internet, or via wireless, cable or satellite networks; downloadable vouchers and coupons; electronic memory or microprocessor cards, all being vouchers or coupons; Computer software to enable creating, editing, uploading, posting, displaying, tagging, blogging, sharing or otherwise providing data including images, graphics, sound, text or audio-visual information via the Internet or other communications network; Parts and accessories for all aforesaid goods; Electronic indicator panels; all relating to smart metering systems; Computers; Recorded computer programs; Computer programs (downloadable); Computers and computer hardware; Computer operating systems; Data processing equipment; Data storage controls and apparatus; Electric installations for the remote control of industrial operations; Electric and electronic control installations and apparatus; Remote control apparatus; Remote data processing apparatus; Monitors [computer hardware]; Monitors [computer programs]; Measuring, signalling and checking (supervision) apparatus; Monitoring apparatus, electric; Control displays for electronic monitoring; Apparatus and instruments for switching, regulating or controlling electricity; Data acquisition software and Analysis, configuration and diagnosis of data; Software for remote control, remote maintenance and remote monitoring; Management programs for remote alarms (telealarms); Control and command systems; all the aforesaid goods in particular for the monitoring and control of energy generating installations; Hardware and software products, devices for automation, control and remote control in the context of functional safety.
Class 35: Marketing of hardware and application software in the field of automation, control and remote control systems; development; importing and exporting of goods of others; Import-export agencies; business consultation and advisory services in the fields of computer hardware, computer software and computer network system design; business management consulting services and business management and consulting services relating to a computer system that integrates natural language processing (NLP),computational linguistics (CL), machine learning (ML), and information retrieval (IR), including text analysis, pattern recognition and image analysis and which is capable of understanding general human queries and formulating responses; data processing services and cloud-based business services, namely, business consultation services via cloud computing networks; business consulting services in the field of software networking, network functional virtualization, and network virtualization; business consulting with relation to strategy, technology deployment, sales, and business processes; Customer relationship management; customer service, namely, responding to customer inquiries for others in the fields of telecommunications, computer networking, computer hardware and software and technology; arranging and conducting trade show exhibitions in the fields of computers, computer services, and information technology; arranging and conducting trade show exhibitions in the field of electronic business transactions via a global computer network; arranging and conducting trade show exhibitions in the field of a computer that integrates natural language processing (NLP), computational linguistics (CL),machine learning (ML), and information retrieval (IR), including text analysis, pattern recognition and image analysis and which is capable of understanding general human queries and formulating responses; reviews of Software Defined Networking (SDN), network functional virtualization, and network virtualization users and projects for commercial purposes; electronic data processing for third parties; demand-side management, namely, management of energy consumption by electrical appliances; Consultancy and advisory services relating to the aforementioned services; information services in the field of energy efficiency; consulting with relation to strategy, technology deployment, sales, and business processes in the field of power storage systems; all included in Int Class 35; Marketing of hardware and software products and devices for automation, control and remote control in the context of functional safety.
Class 37: Installation, maintenance and repair of software and hardware and equipment relating to installations and systems for automation, control and remote control; Installation, maintenance and repair of hardware and software products, devices for automation, control and remote control in the context of functional safety.
Class 38: Telecommunications; Transmission of data, in particular via global computer networks; Arranging access to computer databases; Providing access to a global computer network; Message sending; Electronic messaging; Communication via networks; Portal services relating to automatic meter reading, utilities, gas, energy, energy consumption, water, flowable fluids and meter asset management; Internet portal services; Telecommunication services; Mobile telephone communication services; Telecommunication gateway services; Electronic transmission of data (including images, graphics, sound, text or audio-visual data), messages and documents; Email and instant messaging services; broadcasting services, namely, transmitting, uploading, receiving, sharing, posting, editing, displaying, playing, storing, organising, or otherwise providing electronic media or information over the Internet or other communications networks, including wireless, cable or satellite; transmission of audio, video and electronic communications, documents, messages, voices, text, sound, images, photographs and data; uploading data including images, graphics, sound, text or audio-visual information via the Internet or other communications networks including wireless, cable or satellite for educational and entertainment purposes; Linking to websites of others; editing, posting, displaying, tagging, blogging, or sharing data including images, graphics, sound, text or other audio-visual information via the Internet or other communications network including wireless, cable or satellite for educational purposes; Information, advisory and consultancy services relating to all of the aforesaid services; all relating to smart metering systems; Telecommunications and data transmission using hardware and software products, devices for automation, control and remote control in the context of functional safety.
Class 42: Computer software design; Data recovery services; Computer system monitoring services; Design of computer systems; Computer programming; Engineering services; Design and development of computer hardware and software; Machine condition monitoring; Technical consultancy; Technical project studies; Technical project management in the field of electronic data processing; Scientific and technological services and research and design relating thereto; Electronic archiving of data, in particular long-term storage; All the aforesaid services in particular for the monitoring and control of energy generating installations; Computer services, computer programming; Computer programming for others; Interconnection of hardware and software, namely integration of computer systems and computer networks; downloading, installation and maintenance of security software applications, software applications for screening and blocking unwanted e-mail, and software applications for parental controls of Internet activities provided by communication devices, e-mail, and on-line via the Internet; computer services, namely, monitoring, regulating, and analyzing computer and internet usage for others, and generating reports regarding same; Computer services, namely providing of information relating to the encoding and authentication of electronic data, namely authentication of emails and documents; encryption and decryption of data and communications; computer services, namely, integration of private and public cloud computing environments; computer services, namely cloud hosting provider services; computer services, namely, platform as a service (PAAS) featuring computer software platforms for use in computer network management and monitoring, for alerting and reporting on computer network status, for computer network configuration backup, for updating computer network firmware, for assessment and inventory of networked devices, and for monitoring and management of security, wireless, voice and video networks; Computer services, namely remote and on-site management of virtual private or public clouds (VPCs), VPC networks, VPC environments, VPC infrastructures, thin clients, cloud clients, telephones, personal digital assistants (PDAs), VOIP systems; Computer services, namely remote and on-site management of tablet computers, laptop computers, desktop computers, servers, printers, routers, storage and security devices, operating systems, virtual servers, mail servers, web servers, application servers, storage and printer servers, servers for data centres, storage servers, remote access servers, social media servers, managed services; Remote management and surveillance, help desks, network operations centres (NOCs), business continuity, secure off-site or remote copying, business applications, enterprise resource planning (ERP), anti-virus, anti-spyware and anti-malware systems, for others; Access and leasing of access time to databases connected to local and global computer networks, access to local and global computer networks for transmitting and disseminating information of all kinds, offering of computer programs via local and global computer networks, temporary use of software programs for managing non-downloadable databases via global computer networks; providing temporary use of non-downloadable computer software for recognizing images; providing temporary use of non-downloadable computer software for providing detailed information on a wide range of subjects that appear in photos taken with mobile device; providing temporary use of non-downloadable computer software for biometric systems for the identification and authentication of persons fingerprint and/or finger vein authentication system; providing on-line non-downloadable software in the field of business process management for use by manufacturers; providing on-line non-downloadable software in the field of data management software, namely, database management software for organizing, synthesizing and collecting data from the manufacturing plant floor for use by manufacturers; providing on-line non-downloadable software in the field of manufacturing plant floor management, namely, software used to integrate and configure the existing manufacturing execution system (MES) data of a manufacturing plant with upgraded plant floor management software; providing on-line non-downloadable software in the field of manufacturing plant floor management, namely, software used to identify and evaluate the root causes of process variation that provides real time information to plant floor personnel to avoid the manufacture of defective products; providing on-line non-downloadable software in the field of manufacturing plant floor management in the fields of plant efficiency, plant assessment, plant optimization, and virtual plant modeling; providing information featuring a wide variety of topics of general interest to consuming public, business and private institutions via web sites on global computer networks; Computer software consultancy; Consultancy in relation to computers, namely consultancy in relation to research and development in the computer sector; scientific and industrial research, namely, research and development of new products, biological research, technical research in the field of a computer system that integrates natural language processing (NLP), computational linguistics (CL), machine learning (ML), and information retrieval (IR), including text analysis, pattern recognition and image analysis and which is capable of understanding general human queries and formulating responses, and scientific research for medical purpose; Computer systems integration services; consultancy in the field of design of computer programs for unified communication services; consultancy in the field of ICT infrastructures; consulting services in the field of energy management; Consultancy in the field of computers; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; Technical consultation in the field of electrical power generation and storage systems; technical computer consulting services and technical consultation for computer programming and computer hardware; Computer consultation in the field of computer security; computer consultation services of information and communication technology (ICT) specialists for facilitating of data traffic and for providing access to networks and data bases; consulting services in the fields of computer network support, the use and operation of computer software, systems analysis and integration, installation of computer networks, computer security and the planning, design, and optimization of computer network systems; consulting services in the field of design of computer programs for cloud computing; consulting services in the field of design of computer programs for computer-based information systems for business; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; consulting services in the field of hosting computer software applications; technical consulting in the field of data center security; Consulting services in the field of cloud computing; consulting in the field of infrastructure-as-a-service (SaaS) cloud computing technology, software-as-a-service (SaaS) cloud computing technology, platform-as-a-service (PaaS) cloud computing technology, and software-as-a-service (SaaS) cloud computing technology; technical consulting services relating to the search for active ingredients; design of computer hardware, computer software, web sites and computer network system for others; providing others with information relating to computer hardware and computer software; providing others with the above information via local and global computer information networks; Providing of information in relation to computer networks by means of computer networks, computer networks, computer systems, computers and services relating to network security and cloud computing; providing on-line information in the field of technical information relating to computer software; providing others with information in the field of computer hardware and computer software; Installation, maintenance and updating of computer software; Energy monitoring services for others, namely, viewing or recording the timing or level of use and control of electricity used by selected devices; Customization of computer hardware and software; Computer and network systems analysis; integration of computer systems and networks, computer programming for others all for use in commercial interactions over global computer networks; computer software development, computer programming and maintenance of computer software in the field of energy usage management and energy efficiency; cloud computing services featuring software for use in database management; IT services; remote and on-site management of cloud computing systems and applications for others; cloud computing featuring software for use in database management, security management, analitical computing, data processing, and business analytics; Computer software and hardware testing services; Study of technical projects in relation to hardware and software, namely studies and analysis of computer systems; Computer software and hardware testing services, namely, testing of computer software and computers and servers; Design, maintenance and up-dating of computer software; Computer software and hardware design for others, and consultation services in the field of computers; Computer systems design services for others; design of home and business electric energy control systems for others and engineering services in the field of computerized temperature, fire, safety, security and light control, energy usage management monitoring; design of computer hardware, computer software, web sites and computer network system for others; Design and development of computer systems and hardware and software; Design and development of computer systems, namely hardware and software for unified communications; software development and product development for others in the fields of computer software for integrated circuit cards, chip cards, chip card reading devices, namely, smart card readers, smart card terminals, radio frequency identification (RFID) readers and biometric readers; design for others in the field of computer networks, software, and engineering for the network virtualization and software defined networking; computer network design and computer software design for the network virtualization and the Software Defined Networking (SDN); services relating to the technical supervision and inspection of electronic apparatus and instruments including electronic computers; services in the field of the technical technology supervision and inspection of electronic apparatus ar1d instruments in the nature of electronic computers; troubleshooting of computer hardware and software problems via telephone, e-mail, in person and local and global computer information networks; Computer services, namely technological support, namely troubleshooting and repair of faults in the form of diagnosing hardware and software problems for a computer system incorporating neuro-linguistic programming (NLP), computational linguistics (LC), machine learning (ML) and information retrieval (IR), including analysis of texts, identification of models and image analysis, and systems able to understand generic questions and formulate responses; providing secure remote access to sensitive data by select individuals or groups by means of a computer network; technical support services, namely, deployment, migration and updating of software applications; Development and updating of computer software for others; creation of data-processing software programs for others; Data mining services; rental services of electric and electronic apparatus, instruments and implements; rental services of electric and electronic apparatus, instruments and implements; rental services of computers and electronic measuring apparatus; repair services of computer software program and web site; hosting of digital content on the Internet and other computer and electronic communication networks; Computer data recovery; data automation services using proprietary software to evaluate, analyze and collect service data, including such services in the field of data security, data traffic and communication networks, providing on-demand resource allocation for computer systems including access to virtual servers and virtual machines; application service provider (ASP) featuring software to enable uploading, posting, showing, displaying, sharing or otherwise providing electronic media or information over the Internet and other communication networks; a web-based service featuring technology that enables users to view and manage data from networks of wired and wireless sensors and RFID tags; Application service providers, including speech recognition software, automated call software, software for creating, implementing and managing voice activation systems, for processing transactions and classifying, navigating, searching for, retrieving, displaying and distributing information in databases and on computer networks; Application service providers, including software for analysing the effectiveness of speech recognition software, automated call software and software for creating, implementing and managing voice activation systems, for the purposes of processing transactions and classifying, navigating, searching for, retrieving, displaying and distributing information in databases and on computer networks, included in class 42; Design and development of hardware and software relating to devices for automation, control and remote control in the context of functional safety
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘in particular’ used in the applicant’s list of goods and services, indicates 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, it introduces 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 applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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.
Contested goods in Class 9:
The contested Computer hardware and computer software; firmware; Computers; Recorded computer programs; Computer programs (downloadable); Computers and computer hardware; Monitors [computer programs]; Computer operating systems; Data processing equipment; Electronic publications, downloadable; software products; Computer software; are either identically contained (including synonyms) or included in the broad category of the opponent’s Computer hardware and computer software, computer programs (stored or downloadable), computer operating program (stored), computer peripherals, data processing equipment. Therefore these goods are identical.
The contested electrical and electronic apparatus and instruments for telecontrol, telecounting and telemetering, including apparatus for reading, billing, collecting and registration of energy consumption data; data acquisition and transmission equipment for automatic meter reading devices; instruments for the processing of data for automatic meter reading devices; are included or overlap with the opponent’s data processing equipment. Therefore these goods are identical.
The contested Chips (integrated circuit); Monitors [computer hardware]; Hardware products; data storage controls and apparatus; Remote data processing apparatus; are included in the broader categories of the opponent’s Computer hardware; computer peripherals, data processing equipment. Therefore these goods are identical.
The contested publication in electronic form supplied on line from data bases and from facilities provided on the internet including web pages and websites; publications, newsletters, magazines, pamphlets and leaflets, all in electronic form downloadable from the Internet, telecommunications networks or any other global computer network including wireless, cable or satellite; printed matter, pamphlets, leaflets, all in digital or electronic format; electronic publications provided over a mobile telecommunications network; are all included in or overlap with the broader category of the opponent’s electronic publications (downloadable). Therefore these goods are identical.
The contested Remote control software; Software for the electric power sector (EMS, DMS); Management and remote control software intended for the gas and water sector; Software recorded on electronic chips; computer software for the facilitation and operation of business systems including business systems via the internet the internet and worldwide web; Computer software for business planning, monitoring, analysis, management and productivity; firmware; software for network security, identity management, and network management; software platforms for network security; software for network traffic management and network-based storage; software in the nature of a database and a search engine for database content; software for grid computing including software as a service (saas); computer software especially for data acquisition, data transmission and data analysis in energy supply networks; Computer software to enable creating, editing, uploading, posting, displaying, tagging, blogging, sharing or otherwise providing data including images, graphics, sound, text or audio-visual information via the Internet or other communications network; Parts and accessories for all aforesaid goods; Data acquisition software and Analysis, configuration and diagnosis of data; Software for remote control, remote maintenance and remote monitoring; Management programs for remote alarms (telealarms); are included in the broader categories, or overlap with of the opponent’s computer software, computer programs (stored or downloadable). Therefore these goods are identical.
The contested magnetic discs, magnetic cards and other magnetic media; Data storage media; pre-recorded DVDs, CD ROM' and diskettes; electronic memory or microprocessor cards, all being vouchers or coupons are highly similar to the data processing equipment of the opponent, as they are complementary, and they share the same distribution channels, relevant public and producers.
The contested downloadable vouchers and coupons are similar to the opponent’s electronic publications (downloadable) as they can have the same producer, as well as the same relevant public and distribution channels.
The contested Computer databases; Databases (electronic); computer data bases located on a global computer network, the Internet, or via wireless, cable or satellite networks are similar to the opponent’s computer software. The contested online database is namely a database accessible from a local network or the internet hosted on websites and made available as software as a service product accessible via a web browser. These products are therefore similar to the opponent’s computer software, as they have the same public and distribution channels. Moreover, they are complementary.
The contested SCADA systems; Distributed control systems; SCADA-type control systems and industrial control systems in LAN or WAN environments are not a software, but a more complex system built up from peripheral devices. They use computer hardware and software and are therefore similar to the opponent’s computer hardware; computer peripherals, data processing equipment as they can have the same producer, the same end user and the same distribution channels.
The contested Automatic meter reading devices, water meters, calorimeters; Electricity measuring instruments; Energy monitoring devices; telemetry systems for utilities, gas, energy and flowable fluids; Electronic indicator panels; all relating to smart metering systems; Remote control apparatus; Measuring, signalling and checking (supervision) apparatus; Monitoring apparatus, electric; Control displays for electronic monitoring; Apparatus and instruments for switching, regulating or controlling electricity; Control and command systems; all the aforesaid goods in particular for the monitoring and control of energy generating installations; devices for automation, control and remote control in the context of functional safety; Electric installations for the remote control of industrial operations; Electric and electronic control installations and apparatus are mainly various kinds of meters, checkers, indicators, analysers, gauges, detectors, transducers, sensors, testers, controllers and monitors and are all included in the category of scientific, nautical, surveying, optical, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments. These goods are dissimilar to the opponent’s goods, which are data processing equipment, computer hardware and software. Even though some of the contested devices might contain certain types of software or be used in combination with data processing equipment or computers it is not enough to establish a similarity between them. They differ in their nature, purpose and method of use. They are produced by different manufacturers, distributed by different channels and aimed at a different relevant public.
The same holds true for the contested Electric and electronic apparatus and instruments, including battery chargers, apparatus for storing and providing energy; Accumulators and batteries. They differ in their nature, purpose and method of use. They are produced by different manufacturers, distributed by different channels and aimed at different relevant public. Hence these goods are dissimilar.
The aforementioned dissimilar goods are also not similar to the opponent’s services in Class 35. Those services cover mainly consultancy, marketing and IT related services. Therefore, the contested goods have different natures, purposes and distribution channels from the opponent’s services. It is not common in the trade for a person or company that consults on business or IT issues to produce measuring or electric devices. Therefore, they are dissimilar. For the same reasons those goods are also dissimilar to the opponent’s services in Class 42 which are all linked to IT services.
Contested services in Class 35
The contested Marketing of hardware and application software in the field of automation, control and remote control systems; Marketing of hardware and software products and devices for automation, control and remote control in the context of functional safety; reviews of Software Defined Networking (SDN), network functional virtualization, and network virtualization users and projects for commercial purposes are included in the broader category of the opponent’s Marketing services. Therefore these services are identical.
The contested business consultation and advisory services in the fields of computer hardware, computer software and computer network system design; business management consulting services and business management and consulting services relating to a computer system that integrates natural language processing (NLP),computational linguistics (CL), machine learning (ML), and information retrieval (IR), including text analysis, pattern recognition and image analysis and which is capable of understanding general human queries and formulating responses; data processing services and cloud-based business services, namely, business consultation services via cloud computing networks; business consulting services in the field of software networking, network functional virtualization, and network virtualization; business consulting with relation to strategy, technology deployment, sales, and business processes; Consultancy and advisory services relating to the aforementioned services; consulting with relation to strategy, technology deployment, sales, and business processes in the field of power storage systems; all included in Class 35 are included in the broader categories, or overlap with of the opponent’s Professional business consultancy, organisation consultancy services. Therefore these services are identical.
The contested electronic data processing for third parties is included in the broader category of the opponent’s Data processing for others services. Therefore these services are identical.
The contested information services in the field of energy efficiency are included in the opponent’s efficiency experts. Therefore, they are identical.
The contested demand-side management, namely, management of energy consumption by electrical appliances is similar to the opponent’s efficiency experts. Those services can have the same purpose, namely to use energy efficiently, and can be rendered by the same providers. Furthermore they can have the same public.
The contested Customer relationship management is similar to the opponent’s business management consultancy as those services can be provided by the same producers, can have the same distribution channels, and can have the same end users.
The contested customer service, namely, responding to customer inquiries for others in the fields of telecommunications, computer networking, computer hardware and software and technology, are similar to the opponent’s Public relations services as those services can be provided by the same producers, can have the same distribution channels, and can have the same end users.
The contested development are similar to the opponent’s professional business consultancy services as those services can be provided by the same producers, can have the same distribution channels, and can have the same end users.
The contested importing and exporting of goods of others; Import-export agencies;
are similar to the opponent’s professional business consultancy services as those services can be provided by the same producers, can have the same distribution channels, as well as the same relevant public.
The contested arranging and conducting trade show exhibitions in the fields of computers, computer services, and information technology; arranging and conducting trade show exhibitions in the field of electronic business transactions via a global computer network; arranging and conducting trade show exhibitions in the field of a computer that integrates natural language processing (NLP), computational linguistics (CL),machine learning (ML), and information retrieval (IR), including text analysis, pattern recognition and image analysis and which is capable of understanding general human queries and formulating responses are similar to a low degree to the opponent’s public relations services, as they can have the same purpose. They can as well coincide in end users and be complementary.
Contested services in Class 37
The contested Installation, maintenance and repair of software and hardware and equipment relating to installations and systems for automation, control and remote control; Installation, maintenance and repair of hardware and software products, devices for automation, control and remote control in the context of functional safety are similar to a low degree to the opponent’s data processing equipment in Class 9. It is common in the relevant market sector for the manufacturer of the goods to also provide such services. Furthermore the relevant public can coincide and the installation, maintenance and repair of these goods are provided independently of the purchase of the goods (not aftersales services).
Contested services in Class 38
Telecommunications, also known as ‘telecom’, is a field that covers the exchange of information over (significant) distances by electronic means and refers to all types of content: voice, data, video transmission, etc. ‘Telecommunications’ is a broad term that includes a wide range of information-transmitting technologies such as telephones (wired and wireless); telegraphs; microwave communications; radio and television broadcasting; optical fibre, laser and light beams; satellites; and, of course, the internet. The simplest form of telecommunication takes place between two stations (point to point), but it is common for multiple transmitting and receiving stations to exchange data. Such an arrangement is called a telecommunications network. The internet is the largest example of a telecommunications network. On a smaller scale, examples include local area networks (LANs); corporate and academic wide-area networks (WANs); telephone networks; cellular/mobile networks; police and fire communications systems; taxi dispatch networks; and groups of amateur (ham) radio operators and broadcasting networks. Telecommunications systems are generally run by telecommunications service providers. Under this large umbrella of companies that provide different types of telecommunications services are internet service providers, wireless service providers, radio and television broadcasters, cable companies, satellite television providers and managed service providers.
Therefore, the contested Telecommunications; Transmission of data, in particular via global computer networks; Arranging access to computer databases; Providing access to a global computer network; Message sending; Electronic messaging; Communication via networks; Portal services relating to automatic meter reading, utilities, gas, energy, energy consumption, water, flowable fluids and meter asset management; Internet portal services; Telecommunication services; Mobile telephone communication services; Telecommunication gateway services; Electronic transmission of data (including images, graphics, sound, text or audio-visual data), messages and documents; Email and instant messaging services; broadcasting services, namely, transmitting, uploading, receiving, sharing, posting, editing, displaying, playing, storing, organising, or otherwise providing electronic media or information over the Internet or other communications networks, including wireless, cable or satellite; transmission of audio, video and electronic communications, documents, messages, voices, text, sound, images, photographs and data; uploading data including images, graphics, sound, text or audio-visual information via the Internet or other communications networks including wireless, cable or satellite for educational and entertainment purposes; Linking to websites of others; editing, posting, displaying, tagging, blogging, or sharing data including images, graphics, sound, text or other audio-visual information via the Internet or other communications network including wireless, cable or satellite for educational purposes; Telecommunications and data transmission using hardware and software products, devices for automation, control and remote control in the context of functional safety are all telecommunication services intended to provide computer communication and internet access or provide access via communications networks of different kinds to online content, websites and/or portals of service providers for individual users and/or companies. These services are provided using devices such as the opponent’s data processing equipment. Such services also typically involve the operation of purpose-specific computer software. Moreover, such services typically aim to interconnect with other computers, networks, portals etc. using the opponent’s computer software. Therefore, even though their natures are different, their purposes, end users and distribution channels are the same (12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26). Furthermore, they are complementary. Therefore, these contested services are similar to the opponent’s aforementioned goods in Class 9.
The contested Information, advisory and consultancy services relating to all of the aforesaid services; all relating to smart metering systems are similar to the opponent’s consultancy in the area of information technology (IT) services in Class 42, as those services can be provided by the same companies, can have the same distribution channels, as well as the same relevant public.
Contested services in Class 42
Computer programming (listed twice); computer programming for others; Technical project management are identically contained in both lists of goods and services (including synonyms).
The contested Computer software consultancy; Consultancy in relation to computers, namely consultancy in relation to research and development in the computer sector; scientific and industrial research, namely, research and development of new products, biological research, technical research in the field of a computer system that integrates natural language processing (NLP), computational linguistics (CL), machine learning (ML), and information retrieval (IR), including text analysis, pattern recognition and image analysis and which is capable of understanding general human queries and formulating responses, and scientific research for medical purpose; consultancy in the field of design of computer programs for unified communication services; consultancy in the field of ICT infrastructures; Consultancy in the field of computers; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; technical computer consulting services and technical consultation for computer programming and computer hardware; Computer consultation in the field of computer security; computer consultation services of information and communication technology (ICT) specialists for facilitating of data traffic and for providing access to networks and data bases; consulting services in the fields of computer network support, the use and operation of computer software, systems analysis and integration, installation of computer networks, computer security and the planning, design, and optimization of computer network systems; consulting services in the field of design of computer programs for cloud computing; consulting services in the field of design of computer programs for computer-based information systems for business; Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others; consulting services in the field of hosting computer software applications; technical consulting in the field of data center security; Consulting services in the field of cloud computing; consulting in the field of infrastructure-as-a-service (SaaS) cloud computing technology, software-as-a-service (SaaS) cloud computing technology, platform-as-a-service (PaaS) cloud computing technology, and software-as-a-service (SaaS) cloud computing technology; providing others with information relating to computer hardware and computer software; providing others with the above information via local and global computer information networks; Providing of information in relation to computer networks by means of computer networks, computer networks, computer systems, computers and services relating to network security and cloud computing; providing on-line information in the field of technical information relating to computer software; providing others with information in the field of computer hardware and computer software; consultation services in the field of computers are included in the opponent’s consultancy in the area of information technology (IT). Therefore, they are identical.
The contested Technical consultancy includes the opponent’s Technical applications consultancy with regard to computers and computer programs, in particular for the capture and processing of business data in the fields of manufacturing, personnel and quality control. Therefore, they are identical.
The contested Computer software design; Design of computer systems; Design and development of computer hardware and software; scientific and technological services and research and design relating thereto; Computer services; downloading, installation and maintenance of security software applications, software applications for screening and blocking unwanted e-mail, and software applications for parental controls of Internet activities provided by communication devices, e-mail, and on-line via the Internet; design of computer hardware, computer software, web sites and computer network system for others; Installation, maintenance and updating of computer software; computer software development, computer programming and maintenance of computer software in the field of energy usage management and energy efficiency; IT services; Design, maintenance and up-dating of computer software; Computer software and hardware design for others; Computer systems design services for others; design of computer hardware, computer software, web sites and computer network system for others; Design and development of computer systems and hardware and software; Design and development of computer systems, namely hardware and software for unified communications; software development and product development for others in the fields of computer software for integrated circuit cards, chip cards, chip card reading devices, namely, smart card readers, smart card terminals, radio frequency identification (RFID) readers and biometric readers; design for others in the field of computer networks, software, and engineering for the network virtualization and software defined networking; computer network design and computer software design for the network virtualization and the Software Defined Networking (SDN); technical support services, namely, deployment, migration and updating of software applications; Development and updating of computer software for others; creation of data-processing software programs for others; Design and development of hardware and software relating to devices for automation, control and remote control in the context of functional safety; technical support services, namely, deployment, migration and updating of software applications include, are included in, or overlap with the opponent’s development, creation, improvement, maintenance and updating of programs for word processing, data processing, operational data capture and process control. Therefore, they are identical.
The contested Technical project studies are included in the opponent’s technical project planning. Therefore, they are identical.
The contested anti-virus, anti-spyware and anti-malware systems, for others are included in the opponent’s computer programming. Therefore, they are identical.
The contested Data recovery services; Computer system monitoring services; Electronic archiving of data, in particular long-term storage; Interconnection of hardware and software, namely integration of computer systems and computer networks; computer services, namely, monitoring, regulating, and analyzing computer and internet usage for others, and generating reports regarding same; Computer services, namely providing of information relating to the encoding and authentication of electronic data, namely authentication of emails and documents; encryption and decryption of data and communications; computer services, namely, integration of private and public cloud computing environments; computer services, namely cloud hosting provider services; computer services, namely, platform as a service (PAAS) featuring computer software platforms for use in computer network management and monitoring, for alerting and reporting on computer network status, for computer network configuration backup, for updating computer network firmware, for assessment and inventory of networked devices, and for monitoring and management of security, wireless, voice and video networks; Computer services, namely remote and on-site management of virtual private or public clouds (VPCs), VPC networks, VPC environments, VPC infrastructures, thin clients, cloud clients, telephones, personal digital assistants (PDAs), VOIP systems; Computer services, namely remote and on-site management of tablet computers, laptop computers, desktop computers, servers, printers, routers, storage and security devices, operating systems, virtual servers, mail servers, web servers, application servers, storage and printer servers, servers for data centres, storage servers, remote access servers, social media servers, managed services; Computer systems integration services; Customization of computer hardware and software; Computer and network systems analysis; integration of computer systems and networks, computer programming for others all for use in commercial interactions over global computer networks; cloud computing services featuring software for use in database management; remote and on-site management of cloud computing systems and applications for others; cloud computing featuring software for use in database management, security management, analitical computing, data processing, and business analytics; Computer software and hardware testing services; Study of technical projects in relation to hardware and software, namely studies and analysis of computer systems; Computer software and hardware testing services, namely, testing of computer software and computers and servers; repair services of computer software program and web site; services relating to the technical supervision and inspection of electronic apparatus and instruments including electronic computers; services in the field of the technical technology supervision and inspection of electronic apparatus ar1d instruments in the nature of electronic computers; troubleshooting of computer hardware and software problems via telephone, e-mail, in person and local and global computer information networks; Computer services, namely technological support, namely troubleshooting and repair of faults in the form of diagnosing hardware and software problems for a computer system incorporating neuro-linguistic programming (NLP), computational linguistics (LC), machine learning (ML) and information retrieval (IR), including analysis of texts, identification of models and image analysis, and systems able to understand generic questions and formulate responses; Data mining services; Computer data recovery are similar to the opponent’s computer programming services. All these services are carried out in the field of information technology, where it is not unusual for computer programing companies to also provide all these contested services. The services can also target the same public and can have the same distribution channels.
The contested application service provider (ASP) featuring software to enable uploading, posting, showing, displaying, sharing or otherwise providing electronic media or information over the Internet and other communication networks; a web-based service featuring technology that enables users to view and manage data from networks of wired and wireless sensors and RFID tags; Application service providers, including speech recognition software, automated call software, software for creating, implementing and managing voice activation systems, for processing transactions and classifying, navigating, searching for, retrieving, displaying and distributing information in databases and on computer networks; Application service providers, including software for analysing the effectiveness of speech recognition software, automated call software and software for creating, implementing and managing voice activation systems, for the purposes of processing transactions and classifying, navigating, searching for, retrieving, displaying and distributing information in databases and on computer networks, included in class 42 are all services providing various software over a network to reduce cost. The need for ASPs has evolved from the increasing costs of specialized software that have far exceeded the price range of small to medium-sized businesses. As well, the growing complexities of software have led to huge costs in distributing the software to end-users. Therefore, the above reasoning equally applies to these services, namely that all these services are carried out in the field of information technology, where it is not unusual for computer programing companies to also provide all these contested services. The services can also target the same public and can have the same distribution channels and are thus also similar to the opponent’s computer programming.
The contested Access and leasing of access time to databases connected to local and global computer networks, access to local and global computer networks for transmitting and disseminating information of all kinds, offering of computer programs via local and global computer networks, temporary use of software programs for managing non-downloadable databases via global computer networks; providing temporary use of non-downloadable computer software for recognizing images; providing temporary use of non-downloadable computer software for providing detailed information on a wide range of subjects that appear in photos taken with mobile device; providing temporary use of non-downloadable computer software for biometric systems for the identification and authentication of persons fingerprint and/or finger vein authentication system; providing on-line non-downloadable software in the field of business process management for use by manufacturers; providing on-line non-downloadable software in the field of data management software, namely, database management software for organizing, synthesizing and collecting data from the manufacturing plant floor for use by manufacturers; providing on-line non-downloadable software in the field of manufacturing plant floor management, namely, software used to integrate and configure the existing manufacturing execution system (MES) data of a manufacturing plant with upgraded plant floor management software; providing on-line non-downloadable software in the field of manufacturing plant floor management, namely, software used to identify and evaluate the root causes of process variation that provides real time information to plant floor personnel to avoid the manufacture of defective products; providing on-line non-downloadable software in the field of manufacturing plant floor management in the fields of plant efficiency, plant assessment, plant optimization, and virtual plant modeling; providing information featuring a wide variety of topics of general interest to consuming public, business and private institutions via web sites on global computer networks are all services providing database and various software for temporary use or for use online (non-downloadable). Therefore, the above reasoning equally applies to these services, and thus are also similar to the opponent’s computer programming.
The contested remote management and surveillance, help desks, network operations centres (NOCs), business continuity, secure off-site or remote copying, business applications, enterprise resource planning (ERP) are all services securing the continuous operation of businesses with information technology based solutions. They are similar to the opponent’s consultancy in the area of information technology, as they have similar purposes, they coincide in provider and they target the same consumers.
The contested providing secure remote access to sensitive data by select individuals or groups by means of a computer network; hosting of digital content on the Internet and other computer and electronic communication networks; data automation services using proprietary software to evaluate, analyze and collect service data, including such services in the field of data security, data traffic and communication networks, providing on-demand resource allocation for computer systems including access to virtual servers and virtual machines are all services with the purpose of accessing to, hosting, collecting or analysing data. Therefore, they are similar to the opponent’s technical project management in the field of electronic data processing. They have similar purposes, they are provided by the same companies and target the same consumers.
The contested rental services of electric and electronic apparatus, instruments and implements; rental services of electric and electronic apparatus, instruments and implements; rental services of computers and electronic measuring apparatus are dissimilar to all the goods and services in Classes 9, 35 and 42 of the opponent. Although the rental of electronic apparatus includes the rental of computer hardware, the opponent’s services are all software related and not to any physical devices. The fact, that some of the electronic apparatus has software running in them, is on its own not sufficient to find similarity, as the purpose and the nature of the services at hand are different, they do not coincide in providers and they do not target the same public.
The contested Engineering services; Machine condition monitoring; technical consulting services relating to the search for active ingredients; consulting services in the field of energy management; Technical consultation in the field of electrical power generation and storage systems; design of home and business electric energy control systems for others and engineering services in the field of computerized temperature, fire, safety, security and light control, energy usage management monitoring; Energy monitoring services for others, namely, viewing or recording the timing or level of use and control of electricity used by selected devices are dissimilar to all the goods and services in Classes 9, 35 and 42 of the opponent. This is because they have a distinctly different purpose and nature, as they are not related to information technology. They do not coincide in providers and they target different audiences.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar are directed at the public at large but also at business customers with specific professional knowledge or expertise.
The degree of attention is considered to vary from average to high as some of the goods and services provided are bought on an infrequent basis for a very specific purpose and their price could also be high.
- The signs
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SIS
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Earlier trade mark |
Contested sign
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The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘SIS’ is not meaningful with respect to the relevant goods and services in certain territories, for example, in countries where English is understood.
In the present case, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the relevant public in the European Union.
The earlier right is a word mark and consists of the three letters ‘SIS’. With respect to the goods and services it does not convey any meaning to the relevant public and is therefore distinctive.
The contested sign is a figurative mark. It consists of a circle composed of varying shades of grey coloured rectangular lines, then the word ‘expert’ written in lower and upper case letters, and then the three letters ‘SIS’.
The three letters ‘SIS’ lack any meaning in the relevant territory for the relevant goods and services and, are therefore distinctive.
The verbal element ‘Expert’ of the contested sign, regardless of the lower and upper case letters used, will be identified and understood by the public in the relevant territory as referring to an expert with respect to the goods and services concerned. As such, it conveys a purely promotional information promising expertise in the relevant field and can therefore not serve as an indication of commercial origin (see for instance decision ECLI:EU:T:2014:963, para 45).
Therefore the contested sign is composed of a distinctive verbal element, namely the letters ‘SIS’, and a non-distinctive verbal element, namely ‘expert’ and a less distinctive figurative element of a rather decorative nature, namely the grey circle. Therefore, the verbal element ‘SIS’ is the most distinctive element of the contested sign.
The contested sign has no elements that could be considered clearly more dominant than other elements.
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).
Visually, the signs coincide in the three letters ‘SIS’, which form the only element of the earlier right and the most distinctive element of the contested sign. However, they differ in the non-distinctive element ‘expert’ and the figurative element which is of a rather decorative nature and therefore only lowly distinctive.
Therefore, bearing in mind that the complete earlier right is entirely incorporated in the contested sign, the signs are at least similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SIS’, present identically in both signs and in the case of the earlier right, the only element of it. The pronunciation differs in the word ‘expert’, which is however non-distinctive. The impact of the element ‘expert’ is therefore limited. The figurative elements are not pronounced. Hence, the signs are considered to be aurally similar to an at least average degree.
Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘expert’ of the contested sign, as explained above, the other sign has no meaning in that territory. However as ‘expert’ is not distinctive, this element cannot influence the conceptual comparison. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 goods and 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.
- 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).
It has been established in the previous sections of this decision that the contested goods and services are partly either identical or similar to various degrees to the opponent’s services and partly dissimilar.
It has also been concluded that the signs are visually and aurally similar at least to an average degree, whereas the signs are not conceptually similar.
Additionally, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, the Opposition Division is of the view that there is a likelihood of confusion, including a likelihood of association, even considering that the degree of attention with regard to some of the relevant goods and services may be higher than average.
Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the overall degree of similarity between them, so the relevant public may believe that the identical or similar goods and services come from the same undertaking or, at least, economically-linked undertakings.
It is common practice, on the relevant market, for companies to make variations of their trade marks, for example by altering the typeface or letters, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new image which could be in the case at hand for instance goods and services specially provided by particular experts in the relevant fields. Moreover, consumers are well accustomed to word marks with small variations. Therefore, when encountering the conflicting signs, the relevant public is likely to mentally register the fact that they both contain the same letters ‘SIS’, which constitute also the complete earlier right, and perceive the contested sign as a variation of the earlier mark.
Consequently, the public may attribute the same (or economically linked) commercial origin to the goods and services that are identical or similar, even where the public’s degree of attention is enhanced.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public, even with respect to those services where the similarity is only low.
Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 12 250 197. It follows from the above that the contested trade mark must be rejected for all the contested goods and services that have been found to be identical or similar, even for those services which are similar to a low degree.
However, concerning the contested dissimilar goods, 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 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
|
Tobias KLEE |
Karin KLÜPFEL |
Sigrid DICKMANNS |
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.