OPPOSITION No B 1 029 752

 

Galileo International Technology, LLC, Braemar Court #2, Deighton Road, St. Michael  BB14017, Barbados (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray’s Inn Road, London WC1X 8BT, United Kingdom (professional representative)

 

a g a i n s t

 

ANT Software Ltd, Cambridge Business Park Cowley Road, Cambridge CB4 0WZ, United Kingdom (applicant), represented by Olswang LLP, 90 High Holborn, London  WC1V 6XX, United Kingdom (professional representative).

 

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

 

 

DECISION:

 

1.        Opposition No B 1 029 752 is upheld for all the contested goods and services.

 

2.        European Union trade mark application No 4 189 973 is rejected in its entirety.

 

3.        The applicant bears the costs, fixed at EUR 650.

 

 

REASONS:

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 4 189 973. The opposition is based on, inter alia, European Union trade mark registration No 170 167, in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR, earlier well-known mark for ‘GALILEO INTERNATIONAL’, in relation to which the opponent invoked Article 8(2)(c) in connection with Article 8(1)(b) EUTMR, and on the earlier sign used in the course of trade for ‘GALILEO INTERNATIONAL’, in relation to which the opponent invoked Article 8(4) EUTMR.

 

 

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

 

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

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 170 167.

 

 

1. The goods and services

 

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

 

Class 9: Electrical and electronic apparatus and instruments; computers, word processors; data processing apparatus; electrical and optical data processing apparatus; apparatus and instruments, all for the retrieval, storage, input, processing and display of data; semiconductor memory apparatus; micro processors; computing apparatus; keyboard apparatus for use with computers; printers for use with computers; computer programmes and computer software; punched (encoded) cards and punched (encoded) tapes, magnetic tapes and discs; disc drives; modems; electrical and electronic communication apparatus; computer communication apparatus; parts and fittings for all the aforesaid goods; all included in Class 9.

 

Class 39: Travel services; booking and reservation services for transportation and travel.

 

Class 41: Booking and reservation services for entertainment.

 

Class 42: Hotel, accommodation and restaurant services; booking and reservation services for hotels, accommodation and restaurants; but expressly excluding the aforesaid services related to accommodation and booking of university residences and for other lodging accommodation to be used by all types of students of all ages for the purpose of attending university.

 

The contested goods and services are the following:

 

Class 9: Electrical, electronic and control apparatus and instruments; apparatus and instruments, all for the transmission, reception and reproduction of sound and/or images, televisions, radios, cellular, technology devices, video and mini-disc recorders, CD and DVD players, set-top boxes, decoders for satellite – and/or terrestrial digital broadcast signals; operating systems; apparatus and instruments, all for the receiving, transmitting, storage and/or processing of signals and/or data, computers, computer peripheral devices, computer interface devices, microprocessors, web browsers, user interface devices, Internet, intranet and extranet devices; voice-activated devices, voice recognition devices; electrical and electronic household appliances as far as included in class 9; consumer electrical and electronic goods as far as included in class 9; game consoles, office equipment as far as included in class 9; photocopiers, fax machines, scanners, printers, electronic personal organisers; communications apparatus and instruments; vending machines; coin- and counter-freed machines; point-of-sale apparatus and instruments; software and firmware for all the aforesaid goods; automotive software, software for engine management systems; computer networking hardware, firmware and software; software, firmware, encoded programmes, downloadable software, data carriers; software, encoded programmes, firmware and downloadable software, all relating to the access and browsing of the Internet, intranets and extranets; software, encoded programmes, firmware and downloadable software, all relating to the sending, receiving and management of e-mails; parts and fittings for the aforesaid goods.

 

Class 41: Electronic publishing and distribution services; publishing and distributing audio, video and multimedia content via local and global computer networks.

 

Class 42: Design, creation, development, maintenance and up-dating of software, encoded programmes, firmware and downloadable software; programming services; consultancy and advisory services relating to the foregoing; research, design and consultancy services in the multimedia field.

 

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 electrical, electronic apparatus and instruments; computers; printers; parts and fittings for the aforesaid goods are identically contained in both lists of goods (including synonyms).

 

The contested control apparatus and instruments overlap with the opponent’s electrical and electronic communication apparatus in Class 9. The goods are considered identical.

 

The contested apparatus and instruments, all for the transmission, reception and reproduction of sound and/or images, televisions, radios, cellular, technology devices, video and mini-disc recorders, CD and DVD players, set-top boxes, decoders for satellite – and/or terrestrial digital broadcast signals; operating systems; apparatus and instruments, all for the receiving, transmitting, storage and/or processing of signals and/or data, computer interface devices, microprocessors, web browsers, user interface devices, Internet, intranet and extranet devices; voice-activated devices, voice recognition devices; electronic personal organisers; game consoles; computer networking hardware are included in the broad category of the opponent’s computers  in Class 9. Therefore, they are identical.

 

The computer peripheral devices overlap with the opponent’s printers for use with computers in Class 9. Therefore, they are identical.

 

The apparatus and instruments, all for the receiving, transmitting, storage and/or processing of signals and/or data are included in the broad category of the opponent’s data processing apparatus in Class 9. These goods are identical.

 

The contested electrical and electronic household appliances as far as included in class 9; consumer electrical and electronic goods as far as included in class 9; photocopiers, fax machines, scanners; vending machines; coin- and counter-freed machines; point-of-sale apparatus and instruments are included in the broad category of the opponent’s electrical and electronic apparatus and instruments in Class 9. These goods are identical.

 

The contested software and firmware for all the aforesaid goods; automotive software, software for engine management systems; computer networking firmware and software; software, firmware, encoded programmes, downloadable software; software, encoded programmes, firmware and downloadable software, all relating to the access and browsing of the Internet, intranets and extranets; software, encoded programmes, firmware and downloadable software, all relating to the sending, receiving and management of e-mails are included in the broad category of the opponent’s computer software in Class 9. These goods are identical.

 

The contested office equipment as far as included in class 9 includes, as a broader category, the opponent’s printers for use with computers in Class 9. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

 

The contested communications apparatus and instruments include, as broader categories, the opponent’s electrical and electronic communication apparatus in Class 9. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

 

The contested data carriers include, as broader categories, the opponent’s magnetic tapes and discs in Class 9. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

 

Contested services in Class 41

 

The contested electronic publishing and distribution services; publishing and distributing audio, video and multimedia content via local and global computer networks are similar to the opponent’s computer software in Class 9. These goods and services have the same purpose, they target the same public and they could be provided or manufactured by the same kinds of undertakings.

 

Contested services in Class 42

 

The contested design, creation, development, maintenance and up-dating of software, encoded programmes, firmware and downloadable software; programming services; consultancy and advisory services relating to the foregoing; research, design and consultancy services in the multimedia field are similar to the opponent’s computer software in Class 9. These goods and services have the same distribution channels, target the same public and are normally provided or manufactured by the same kinds of undertakings.

 

 

2. Relevant public — degree of attention

 

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

 

In the present case, the goods and services found to be identical or similar are partly directed at the public at large and partly at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to above average, depending on the price, (specialised) nature and conditions of the purchased goods and services. Bearing in mind that some of the goods and services are infrequent purchases of which the price could be quite high, the level of attention of the relevant public is considered to be above average for these goods and services for example electrical and electronic household appliances as far as included in class 9 and electronic publishing and distribution services in Class 41.

 

 

3. The signs

 

 

 

GALILEO	GALIO
Earlier trade mark	Contested sign

 

 

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

 

The earlier mark is a word mark consisting of the word ‘GALILEO’. The contested sign is a word mark composed of the word ‘GALIO’.

 

The earlier mark ‘GALILEO’ will be perceived by a part of the relevant public as referring to ‘Galileo Galilei. 1564–1642, Italian mathematician, astronomer, and physicist’ (see Collins English Dictionary online). However, for another part of the public, the earlier mark is meaningless. In any case, this word is not descriptive, allusive or otherwise weak with respect to the relevant goods and services. The contested sign is meaningless. Consequently, both marks are distinctive.

 

Visually, the signs coincide in the sequence of letters ‘G-A-L-I-*-*-O’. All the letters of the contested sign are entirely contained, mainly at the beginning of the earlier mark. Moreover, the last letter ‘O’ is also placed in both marks at the end. On the other hand, they differ in the fifth and sixth letters of the earlier mark ‘L-E’, which are not shared by the contested sign.

 

Furthermore, the first parts of the conflicting marks coincide, ‘GALI-‘. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

 

Therefore, the signs are visually similar to an average degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /G-A-L-I-*-*-O/, present identically in both signs. The earlier mark is pronounced in four syllables /GA-LI-LE-O/ and the contested sign in three /GA-LI-O/ or even in two /GA-LIO/ (depending on the language), of which only the third syllable /LE/ of the earlier mark is not pronounced in the contested sign. The different letters fall in the middle of the earlier mark, where they can be easily overlooked. The marks are aurally similar to an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public. For another part of the public, the earlier mark will be perceived as having the meaning as explained above, while the contested sign is meaningless. 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.

 

 

4. Distinctiveness of the earlier mark

 

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

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

Consequently, the assessment of the distinctiveness of the earlier 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.

 

 

5. Global assessment, other arguments and conclusion

 

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings.

 

The goods and services at issue have been found identical or similar and the level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness.

 

The marks have been found visually and aurally similar to an average degree, without this impression being altered by any conceptual perception for a part of the public and for another part of the public the marks are not conceptually similar.

 

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

 

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

 

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 170 167. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

As the earlier right, EU registration No 170 167, ‘GALILEO’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(2)(c) in connection with Article 8(1)(b), 8(4) and (5) EUTMR.

 

 

COSTS

 

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

 

 

 

 

The Opposition Division

 

 

Saida CRABBE

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

 

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.