OPPOSITION No B 2 674 318

Pirobase Imperia Gmbh, Von-der-Wettern-Str. 27, 51449 Köln, Germany (opponent), represented by Heuking Kühn Lüer Wojtek, Magnusstr. 13, 50672 Köln, Germany (professional representative)

a g a i n s t

Imperia Mobile, 69 Bulgaria blvd., 1404 Sofia, Bulgaria (applicant).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 674 318 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 882 419 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 14 882 419. The opposition is based on, inter alia, German trade mark registration No 39 609 884. The opponent invoked Article 8(1) (b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 39 609 884.

1. The goods and services

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

Class 9:        With information supplied machine readable data carriers of all kinds and software, in particular digital and analogue recording devices; programmed floppy diskettes, cd rom video cassettes, compact disks and chip disks as well as clay/image and video recording devices; chip cards, as included in Class 9.

Class 35:        Realizing of publicity; advertising and advertising agencies including handling and realisation as well as production of telecommunications, radio and television advertising programs; marketing, marketing studies and analysis; distribution of goods for advertising purposes; handling and realisation of advertising events; sales promotion, public relations and belonging services; advertising.

Class 38:        Services in the field of telecommunications; handling of information to third party, distribution of information on wireless or cable bonded nets, organisation and distribution of radio and television broadcast; on line services, message sending; updating service also for cd rom; issuing digital and analogue recording devices, email data services (= electronic mail order), always as in class 38 included.

Class 42:        Computer programming, care and updating of those programs, field of data banks, as included in Class 42.

The contested goods and services are the following:

Class 9        Software; Application software; Interfaces for computers; Interactive computer software; Computer telephony software; Games software; Communication software; Computer software platforms; Software for tablet computers; Graphical user interface software; Process controlling software; Computer e-commerce software; Digital telephone platforms and software; Computer software for business purposes; Interactive multimedia software for playing games; Computer software applications, downloadable; Application software for mobile phones; Communications processing computer software; Computer software for processing market information; UPI [universal peripheral interface] software; Software and applications for mobile devices; Computer application software for mobile telephones; Computer software for database management; Software for commerce over a global communications network; Virtual reality game software; Electronic game software for mobile phones; Software for processing images, graphics and text; Electronic game software for handheld electronic devices; Computer software for application and database integration; Application software for social networking services via internet; Computer game software for use on mobile and cellular phones; Computer programs and software for image processing used for mobile phones; Computer communication software to allow customers to access bank account information and transact bank business; Computer software for communicating with users of hand-held computers; Computer software for authorising access to data bases; Application software for wireless devices; Downloadable interactive entertainment software for playing video games.

Class 41:        Interactive entertainment services; Entertainment provided via the internet.

Class 42:        Programming of telecommunications software; Computer programming for data processing and communication systems; Computer programming of video and computer games; Professional consultancy services relating to computer programming; Computer programming and maintenance of computer programs; Computer programming services for data warehousing; Computer programming services for commercial analysis and reporting; Computer programming services for electronic data security; Computer programming for telecommunications; Software engineering; Maintenance of software; Software as a service [SaaS]; Computer software consultancy; Software development; Software customisation services; Updating of computer software; Computer systems integration services; Data mining; Development of interactive multimedia software; Services for the writing of computer software; Developing and updating computer software; Programming of educational software; Software design for others; Design of computer game software; Maintenance and updating of computer software; Consultancy in the field of software design; Computer software design; Software design and development; Creation of computer programmes for data processing; Computer software development for others; Updating and maintenance of computer software and programs; Research, development, design and upgrading of computer software; Troubleshooting of computer software problems; Programming of software for information platforms on the Internet; Programming of software for e-commerce platforms; Design and development of software for inventory management; Development and testing of computing methods, algorithms and software; Design and development of route planning software; Development of software for processing and distribution of multimedia contents; Design and development of computer software for use with medical technology; Programming of computer software for reading, transmitting and organising data; Application service provider [ASP], namely, hosting computer software applications of others; Design and development of operating software for accessing and using a cloud computing network; Commissioned writing of computer programs, software and code for the creation of web pages on the Internet; Development of computer software application solutions; Design and development of computer software for logistics, supply chain management and e-business portals; Design and development of computer software for reading, transmitting and organising data; Creation, design, development and maintenance of Web sites for third parties; Advisory services relating to man-machine interfaces for computer software; Application service provider services; Information technology [IT] consultancy.

        

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 Class 9 of the opponent’s list of goods and services, refers to the term with information supplied machine readable data carriers of all kinds and not to software, as software cannot be a device.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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

Software is identically contained in both lists of goods.

The contested application software; Interfaces for computers; Interactive computer software; Computer telephony software; Games software; Communication software; Computer software platforms; Software for tablet computers; Graphical user interface software; Process controlling software; Computer e-commerce software; Digital telephone platforms and software; Computer software for business purposes; Interactive multimedia software for playing games; Computer software applications, downloadable; Application software for mobile phones; Communications processing computer software; Computer software for processing market information; UPI [universal peripheral interface] software; Software and applications for mobile devices; Computer application software for mobile telephones; Computer software for database management; Software for commerce over a global communications network; Virtual reality game software; Electronic game software for mobile phones; Software for processing images, graphics and text; Electronic game software for handheld electronic devices; Computer software for application and database integration; Application software for social networking services via internet; Computer game software for use on mobile and cellular phones; Computer programs and software for image processing used for mobile phones; Computer communication software to allow customers to access bank account information and transact bank business; Computer software for communicating with users of hand-held computers; Computer software for authorising access to data bases; Application software for wireless devices; Downloadable interactive entertainment software for playing video games are included in the broad category of the opponent’s software. Therefore, they are identical.

Contested services in Class 41

The contested interactive entertainment services; Entertainment provided via the internet coincide in provider/producer with the opponent’s software in Class 9, which also includes, inter alia, game software for entertainment purposes. Furthermore, they also target the same consumer and they are complementary. Therefore, they are similar to a low degree.

Contested services in Class 42

The contested updating of computer software (listed three times); updating computer software; updating of computer programs and the opponent’s updating of those [computer] programs refer to the same service and they are therefore identical.

The contested programming of telecommunications software; Computer programming for data processing and communication systems; Computer programming of video and computer games; Computer programming; Computer programming services for data warehousing; Computer programming services for commercial analysis and reporting; Computer programming services for electronic data security; Computer programming for telecommunications; Software development; Software customisation services; Computer systems integration services; Development of interactive multimedia software; Services for the writing of computer software; Developing computer software; Programming of educational software; Software development; Creation of computer programmes for data processing; Computer software development for others; development of computer software; Programming of software for information platforms on the Internet; Programming of software for e-commerce platforms; development of software for inventory management; Development and testing of computing methods, algorithms and software; development of route planning software; Development of software for processing and distribution of multimedia contents; development of computer software for use with medical technology; Programming of computer software for reading, transmitting and organising data; development of operating software for accessing and using a cloud computing network; Commissioned writing of computer programs, software and code for the creation of web pages on the Internet; Development of computer software application solutions; development of computer software for logistics, supply chain management and e-business portals; development of computer software for reading, transmitting and organising data are included in the broad category of, or overlap with, the opponent’s computer programming. Therefore, they are identical.

The contested Software engineering includes, as a broader category, or overlaps with, the opponent’s computer programming. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested maintenance of computer programs; Maintenance of software; Maintenance of computer software; maintenance of computer software and programs  include, as broader categories, or overlap with,  the opponent’s care and updating of those [computer] programs. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested upgrading of computer software is included in the broad category of the opponent’s care and updating of those [computer] programs. Therefore, they are identical.

The contested software design for others; Design of computer game software; Computer software design; Software design; design of computer software; Troubleshooting of computer software problems; Design of software for inventory management; Design of route planning software; Design of computer software for use with medical technology; Design of operating software for accessing and using a cloud computing network; Design of computer software for logistics, supply chain management and e-business portals; Design of computer software for reading, transmitting and organising data can all be used in the process of computer programming and the services coincide in nature, provider, relevant public and distribution channels with the opponent’s computer programming. Therefore, they are similar to a high degree.

The contested Creation, design, development and maintenance of Web sites for third parties coincide in producer, end user and distribution channels with the opponent’s computer programming. Therefore, they are similar.

The contested data mining; Research of computer software have the same distribution channels, relevant public and provider as the opponent’s computer programming and they are therefore similar.

The contested professional consultancy services relating to computer programming are closely connected with the opponent’s computer programming as both services often will be provided in connection with each other. They coincide in distribution channels, relevant public and provider and they are therefore similar.

The contested computer software consultancy; Consultancy in the field of software design; Advisory services relating to man-machine interfaces for computer software; Information technology [IT] consultancy are closely connected with the opponent’s care and update of those [computer] programs as both services often will be provided in connection with each other. They coincide in nature, method of use, relevant public and provider, and moreover they are complementary. Therefore, they are similar.

The contested software as a service [SaaS]; Application service provider [ASP], namely, hosting computer software applications of others; Application service provider services and the opponent’s computer programming are both directed at a public who wishes to purchase new software/programs and the services coincide in distribution channels, relevant public and provider. Therefore, they are similar.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to various degrees are directed at the public at large and/or business customers with specific professional knowledge or expertise, as some of the goods and services at issue are mass consumption goods and services, such as interactive entertainment services whilst others are specialised goods and services, such as computer programming.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication/specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

Imperia	Imperia Mobile
Earlier trade mark	Contested sign

The relevant territory is Germany.

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

The earlier mark is a word mark consisting of the verbal element ‘Imperia’, which has no meaning in German and in relation to the goods and services this verbal element has an average degree of distinctiveness.  

The contested sign is a word mark constituted by the verbal elements ‘imperia’ and ‘mobile’. It can be reasonably assumed, given the extensive use of this term in the given fields, that the verbal element ‘mobile’ will be understood by the relevant public as referring, inter alia, to mobile communication, mobile telecommunication, or something provided on a mobile platform. In relation to the goods and services this element will be non-distinctive as all the goods and services can be related to mobile communication, mobile telecommunication or can be provided on a mobile platform, e.g. software or programming of software for mobile phones or entertainment services provided on a mobile platform. ‘Imperia’ has an average degree of distinctiveness as explained above

As both signs are word marks neither of them have any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘Imperia’ which constitute the whole earlier mark and the first element of the contested sign. This coinciding element is also the only distinctive element of the contested sign. The marks differ in the verbal element ‘Mobile’ of the contested sign which is non-distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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, and as the signs merely differ in a non-distinctive element, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛Imperia’, present identically in both signs and constituting the whole earlier mark and the first element of the contested sign. This coinciding element is also the only distinctive element of the contested sign. The pronunciation differs in the sound of the letters constituting the verbal element ‛Mobile’ in the contested sign, which is non-distinctive.

As the signs merely differ in a non-distinctive element, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of one of the elements in the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

However, the element ‘Mobile’, with the meaning explained above, is the only element with a meaning, and this element is non-distinctive thus it has a very limited impact on the overall impression.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark 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

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but 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). This is also true for consumers with a high degree of attention, since these customers would also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

The goods and services are identical or similar to various degrees and the degree of distinctiveness of the earlier mark is normal. The degree of attention of the relevant public is varying from average to high.

The signs differ only in a non-distinctive element, as explained above under section c) of this decision. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. On the other hand, consumers pay less attention to those elements in a trade mark that are non-distinctive. In the present case, the additional element in the contested sign, ‘Mobile’, has a very limited impact on the overall impression. Consequently, consumers will focus on the element ‘Imperia’, from which the coincidence with the earlier mark arises. It follows, that the difference between the signs is clearly not sufficient to outweigh the high visual and aural similarity and to exclude a likelihood of confusion. Taking into consideration the imperfect recollection, this is also the case for consumers with a high degree of attention.

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). Therefore, as the signs aurally and visually are highly similar, the low degree of similarity between some of the goods and services is offset by the high similarity between the signs. Therefore, there will also be a likelihood of confusion for these services.

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 German trade mark registration No 39 609 884. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier right German trade mark registration No 39 609 884 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).

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

Solveiga BIEZA

Cecilie Leth BOCKHOFF

Michele M. BENEDETTI-ALOISI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.