OPPOSITION No B 2 759 879

Omni Corporate Assets Ltd., Palm Grove House PO Box 438, Road Town, Tortola, British Virgin Islands (opponent), represented by Norman Strong, 2nd Floor, Lynton House, 7-12 Tavistock Square, London WC1H 9BQ, United Kingdom (professional representative)

a g a i n s t

P3 insight GmbH, Am Kraftversorgungsturm 3, 52070 Aachen, Germany (applicant), represented by Michalski Hüttermann & Partner Patentanwälte mbB, Speditionstraße 21, 40221 Düsseldorf, Germany (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 759 879 is partially upheld, namely for the following contested goods and services:

Class 9:        Software, solely for quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto.

Class 38:        Advisory and consultancy services relating to wireless communications and wireless communications equipment; consultancy in the field of telecommunications; the aforesaid services solely for quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto.

Class 42:        Software development; the aforesaid services solely for quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto.

2.        European Union trade mark application No 15 245 905 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 245 905, namely against all the goods and services in Classes 9, 38 and 42. The opposition is based on European Union trade mark registration No 3 985 744. The opponent invoked Article 8(1)(a) and (b) EUTMR.

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

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

1. The goods and services

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

Class 9:        Computer software for controlling download transactions namely, to pause and resume downloads, to automatically handle firewalls and proxy authentications, to perform an integrity check on the download file, for reloading incrementally after data corruption, for scheduled or fully automated on-demand downloads and updates by automatically reading out a machine's specification, for automatically installing and executing applications with commands on the client machine after download, and for controlled LAN roll-outs through remote distribution, all of them optionally via secured communication, multi-sourcing, and background download for use in download management and secured license control in the field of electronic distribution and managing of digital goods, in International Class 009.

Class 38:        Providing access to computer software for controlling download transactions namely, to pause and resume the initial download, to perform an integrity check on the download file, for reloading incrementally after data corruption, for scheduled or full automated on-demand downloads by automatically reading out a machine's specification, and for automatically installing and executing applications with commands on the client machine after download, all of them optionally via secured communication, multi-sourcing and background downloads for use in download management and secured license control in the field of digital transmission of voice, data, images, signals, and messages, in International Class 038.

Class 42:        Providing temporary access to computer software for controlling download transactions namely, to pause and resume downloads, to automatically handle firewalls and proxy authentications, to perform an integrity check on the download file, for reloading incrementally after data corruption, for scheduled or fully automated on-demand downloads and updates by automatically reading out a machine's specification, for automatically installing and executing applications with commands on the client machine after download, and for controlled LAN roll-outs through remote distribution, all of them optionally via multi-sourcing and via background downloads for use in download management and secured license control in the field of electronic distribution and managing of digital goods, in International Class 42.

The contested goods and services are the following:

Class 9:        Software, solely for quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto.

Class 38:        Advisory and consultancy services relating to wireless communications and wireless communications equipment; consultancy in the field of telecommunications; the aforesaid services solely for quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto.

Class 42:        Science and technology services; industrial research; engineering consultancy services; telecommunications engineering consultancy; quality control; quality control; consultancy services relating to quality control; technical measuring and testing; development of measuring and testing methods; new products (testing of -); certification [quality control]; software development; the aforesaid services solely for quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto.

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

The terms ‘solely’ and ‘namely’, used in the applicant’s and opponent’s lists 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 software, solely for quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto are specified software used for verifying the infrastructure of the communication networks/terminals. The opponent’s computer software for controlling download transactions namely, for controlled LAN roll-outs through remote distribution, all of them optionally via secured communication, multi-sourcing, and background download for use in download management and secured license control in the field of electronic distribution and managing of digital goods are also specified software, used to securely control roll-outs in LAN’s, namely installations of new software through different stages in local area networks. Therefore, both these types of software have a verifying or securing purpose in relation to either communications networks or local area networks; for example, to prevent that any harm or virus comes to the network. Moreover, they have overlapping natures and methods of use and these goods can be produced by the same companies and be sold through the same channels. Consequently, the contested goods in Class 9 are at least highly similar to the opponent’s goods mentioned above.

Contested services in Class 38

The contested advisory and consultancy services relating to wireless communications and wireless communications equipment; consultancy in the field of telecommunications; the aforesaid services solely for quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto are specified advisory and consultancy services related to wireless communication and telecommunication. The opponent’s providing access to computer software for controlling download transactions namely, to pause and resume the initial download, to perform an integrity check on the download file, for reloading incrementally after data corruption, for scheduled or full automated on-demand downloads by automatically reading out a machine's specification, and for automatically installing and executing applications with commands on the client machine after download, all of them optionally via secured communication, multi-sourcing and background downloads for use in download management and secured license control in the field of digital transmission of voice, data, images, signals, and messages are specified telecommunication services relating to providing access to the specified computer software in question. Since the contested services are consultancy services in the field of telecommunication and wireless communication related to assessing communications networks (e.g. detecting external risks, such as viruses) and the opponent’s services are telecommunication services relating to software with a similar purpose, these services may be offered by the same companies and target same relevant publics. Therefore, they are deemed similar.

Contested services in Class 42

The contested software development solely for quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto are offered by the same companies and target the same relevant public as the opponent’s computer software for controlling download transactions namely, for controlled LAN roll-outs through remote distribution, all of them optionally via secured communication, multi-sourcing, and background download for use in download management and secured license control in the field of electronic distribution and managing of digital goods in Class 9. These goods and services may also be complementary, since software development is a necessity for making software,   and it cannot be excluded that the specified software development of the applicant also covers development of the specified software of the opponent’s mark in Class 9. Therefore, these goods and services are similar.  

However, the contested science and technology services; industrial research; engineering consultancy services; telecommunications engineering consultancy; quality control; quality control; consultancy services relating to quality control; technical measuring and testing; development of measuring and testing methods; new products (testing of -); certification [quality control] all related to quality assurance, detecting, analysing and assessing communications networks and terminals connected thereto, are specified science and research related services, consultancy services related to engineering, telecommunications engineering and quality control and, for example, development of measuring and testing methods. Such services are dissimilar to the opponent’s specified software in Class 9 and to the opponent’s specified services in Classes 38 and 42, which relates to providing access to computer software (temporary or not). These conflicting goods and services have different natures, purposes and methods of use and they are not complementary or in competition.

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 similar to various degrees are directed at a specialised public with specific knowledge and expertise within the field of IT and telecommunications. Bearing in mind that the goods and services are rather specialised, the degree of attention may be higher than average.

3. The signs

get
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 sign’s common verbal element ‘get’ will be understood by the specialised relevant public, namely as ‘come to have (something); receive’ (information extracted from Oxford Dictionaries online on 06/07/2017 at https://en.oxforddictionaries.com/definition/get). However, such a meaning is distinctive in relation to the goods and services at issue.

Moreover, the contested sign, a figurative mark, also contains a logo shaped as a ‘U’ in navy and with red bars placed within this logo, from left to right. For a part of the public this logo may be perceived as the letter ‘U’ and/or as an abbreviation for ‘you’, which can in the latter case lead to the sign being perceived as ‘you get’ as a whole. However, for the remaining and significant part of the public the sign’s figurative elements will not convey any meanings. Perceived as a ‘U’, ‘you’, the expression ‘you get’ or merely as figurative elements with no meaning, these elements are distinctive, since they do not have any known meaning in relation to the goods and services in question.  

Nevertheless, the Opposition Division finds it appropriate to focus its comparison of signs on the part of the public for which the logo of the contested sign will not be perceived as a letter and, therefore, do not evoke any concepts, since a significant part of the public will perceive the contested sign as such and since the signs are more similar for this part of the public.

Visually, the signs coincide in the distinctive element ‘get’, which appears as a separated and individual element in the contested sign. They differ in the graphic and figurative elements of the contested sign, described above. However, in general, consumers tend to focus on the word elements of signs. Indeed, 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). Therefore, the signs are at least visually similar to an average degree.

Aurally, both signs will be pronounced as ‘get’ and are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived with the distinctive concept of ‘get’, the signs are conceptually identical, since the distinctive figurative elements of the contested sign do not convey any particular concepts for the public under analysis.

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 recognition and has been intensively used in the market. To demonstrate this, especially that it has been used in the market, the opponent has provided some items of evidence which intend to demonstrate such extensive use. 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

In addition, the global assessment of the likelihood of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods and services are partly similar to various degrees and partly dissimilar. The signs are at least similar to an average degree visually and are aurally and conceptually identical for the public taken into account. Moreover, the earlier mark is of normal distinctiveness. Account is also taken of the fact that even consumers who pay a high degree of attention, as in this case, need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, there is a likelihood of confusion on the significant part of the public as explained in section c) of this decision. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to various degrees to those of the earlier trade mark.

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

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its use/reputation as claimed by the opponent and in relation to similar goods and services to various degrees. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The Opposition Division also notes that the applicant’s observations are not taken into account since they were not translated into the language of proceedings and were filed late. The applicant only provided observations and arguments in German while the language of proceedings is in English.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

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

Boyana NAYDENOVA

Christian RUUD

Benoit VLEMINCQ

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.