OPPOSITION No B 2 731 449

Jarvis Sas, 23 rue Rivay, 92300 Levallois Perret, France (opponent), represented by Feral-Schuhl / Sainte-Marie Aarpi, 24, rue Erlanger, 75016 Paris, France (professional representative)

a g a i n s t

Jaarvis Labs Limited, P.O Box 1239, Offshore Incorporation Centre, Mahe Victoria Seychelles (applicant), represented by Stefano Merico, Via Eschilo, 190 int. 7, 00125, Rome, Italy (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 731 449 is partially upheld, namely for the following contested goods and services:

Class 9: Software; application software; computer software; computer e-commerce software; databases (electronic); electronic publications, downloadable; downloadable computer graphics; graphical user interface software; software for processing images, graphics and text.

Class 35:        Business management; business management consultancy and advisory services; business administration; wholesale services and retail services, also on line, relating to software.

2.        European Union trade mark application No 15 055 072 is rejected for all the above goods and services. It may proceed for the remaining goods and 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 15 055 072, namely against some of the goods and services in Classes 9, 35 and 42. The opposition is based on European Union trade mark registration No 12 665 758 and French trade mark registration No 4 071 337. The opponent invoked Article 8(1)(b) and 8(4) EUTMR.

SUBSTANTIATION

As regards French trade mark registration No 4 071 337 for the word mark ‘JARVIS LEGAL’ the Opposition Division notes the following.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case the notice of opposition was not accompanied by any evidence, such as registration certificate, as regards the earlier French trade mark on which the opposition is based.

On 19/07/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations, subsequently extended on the request of the opponent. This time limit expired on 24/01/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier French trade mark registration No 4 071 337.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

Therefore, the Opposition Division will proceed with the examination of European Union trade mark registration No 12 665 758.

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 programmes [programs], recorded; programs (computer -) [downloadable software]; computer software platforms; computer software applications, downloadable; computer software packages; computer databases; data communications software; computer software to automate data warehousing; computer programmes for data processing; computer software for document management; computer software for application and database integration; computer software for creating searchable databases of information and data; computer software programs for database management; computer software programs for spreadsheet management; computer software to enable the searching of data; computer software, computer software packages, apps, platforms, programs and databases for use in administrative, document and commercial management in the legal professions and by law professionals; information storage apparatus [electric or electronic]; data storage devices; optical recording media; other digital recording media; computer database servers; file servers; intranet servers; computer servers; servers for web hosting; electronic mail servers.

Class 35:        Commercial administration of the licensing of the goods and services of others; business consultancy relating to the administration of information technology; advisory services relating to electronic data processing; business efficiency expert services; advisory service for organizational issues and business administration, with and without the help of electronic data bases; computerised file management; management of databases for use in administrative, document and commercial management in the legal professions and by law professionals; invoicing; updating and maintenance of data in computer databases; document reproduction; clerical services; word processing; office machines and equipment rental; compilation of statistics; on-line data processing services; document preparation.

Class 38:        Telecommunications; rental of telecommunication equipment; data communication by electronic means; electronic mail; provision of communications between computers; provision of communication facilities for the interchange of data by electronic means; providing access to data or documents stored electronically in databases for remote consultation; telecommunications services for providing access to computer databases; transmission and reception [transmission] of database information via the telecommunication network; telecommunications services between computer networks; electronic transmission of documents (services for the -); electronic transmission of images (services for the -); message sending services; data bank interconnection services; electronic data interchange services; communications by computer terminals; electronic mail; providing e-mail fax services; internet telephony services; electronic file transfer; forums [chat rooms] for social networking; provision of access to electronic messaging systems; virtual chatrooms established via text messaging; message sending and receiving services; news agencies.

Class 42:        Providing information, advice and consultancy services in the field of computer software; design, maintenance, development and updating of computer software; development of computer software application solutions; design services for data processing systems; database design and development; design and maintenance of computer sites for third parties; computer project management services; computer systems integration services; rental of computer hardware and facilities; rental and maintenance of computer software; customization of computer hardware and software; computer systems integration services; data migration services; creation, design, development and maintenance of web sites for third parties; editing of computer programs; installation and maintenance of computer programs; maintenance of data bases; maintenance of websites and hosting on-line web facilities for others; application service provider (asp); cloud computing; software as a service [saas]; server hosting; hosting of internet sites; provision of computing facilities; rental services relating to data processing equipment and computers; technical project studies in the field of computer hardware and software; disaster recovery services for computer systems; computer virus protection services; data security services [firewalls]; data recovery services; digitization of documents [scanning]; data conversion of computer programs and data [not physical conversion]; off-site data backup; rental of web servers; consultancy, design, development, installation, computer-related management, rental, updating and maintenance relating to computer software, computer software packages, software as a service (saas) for use in administrative, document and commercial management in the legal professions and by law professionals.

The contested goods and services are the following:

Class 9:         Software; application software; computer software; computer e-commerce software; databases (electronic); electronic publications, downloadable; downloadable computer graphics; graphical user interface software; software for processing images, graphics and text; payment terminals, money dispensing and sorting devices; navigation, guidance, tracking, targeting and map making devices; goods, vehicles tracking apparatus; safety, security, protection and signalling devices; access control devices; electronic devices used to locate, goods, persons, articles employing the global positioning system or cellular communication networks; measuring, detecting and monitoring instruments, indicators and controllers.

Class 35:        Business management; business management consultancy and advisory services; business administration; advertising; online advertisements; advertising and marketing; advertisement for others on the internet; developing promotional campaigns for business; analysis of advertising response; consultancy relating to the organisation of promotional campaigns for business; business consultancy services relating to marketing, promotion and management of fund raising campaigns; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; advertising services for the promotion of e-commerce; wholesale services and retail services, also on line, relating to computers, software, and electronic equipment; presentation of goods on communications media, for retail purposes; distribution of publicity materials, namely, flyers, prospectuses, brochures, samples; commercial trading and consumer information services.

Class 42:        IT services; development, preparing, integration of computer software; information technology [it] consultancy; programming of software for e-commerce platforms; design of communication systems; engineering services relating to the design of communications systems; research in the field of communications technology; disaster recovery services for data communications systems; computer programming for data processing and communication systems; maintenance and updating of software for communication systems; testing, analysis and monitoring of telecommunication signals; computer graphics design services; visual design; computer aided testing services; design and development of electronic data security systems; internet web site design services; consultancy relating to the design of home pages and internet sites; hosting websites on the internet; design, creation, hosting and maintenance of internet sites for third parties; cloud computing.

An interpretation of the wording of the opponent’s list of goods and services is required to determine the scope of protection of these services. In Class 9 a semicolon (;) appears just before the terms other digital recording media. As the wording following this semicolon relates to the goods listed before (optical recording media) and as this wording cannot stand alone in those classes, the Opposition Division assumes that the semicolon must be interpreted as a comma.

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 application software and the opponent’s computer software applications are synonyms and therefore are considered identical. 

The contested software; computer software include, as broader categories the opponent’s computer programmes [programs], recorded; programs (computer -) [downloadable software]. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested computer e-commerce software; graphical user interface software; software for processing images, graphics and text include, as broader categories, or overlap with, the opponent’s computer software platforms; computer software applications, downloadable; computer software packages. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested databases (electronic) include, as a broader category, or overlap with, the opponent’s computer databases. 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 electronic publications, downloadable; downloadable computer graphics and the opponent’s computer software applications, downloadable usually are accessible on on-line platforms run by the same provider, thus they are often accessible simultaneously (the same distribution channel) and are provided to the same consumers; moreover they are also often complementary to each other. For these reasons they are considered similar.  

The remaining contested goods such as payment terminals, money dispensing and sorting devices; navigation, guidance, tracking, targeting and map making devices; goods, vehicles tracking apparatus; safety, security, protection and signalling devices; access control devices; electronic devices used to locate, goods, persons, articles employing the global positioning system or cellular communication networks; measuring, detecting and monitoring instruments, indicators and controllers do not have any commonalities with the opponent’s goods in Class 9, they differ in their purpose and nature of use, and even though all are tangible these goods are designed for different needs. Moreover, neither are they in competition to, nor complementary to each other. The same remarks are valid as the opponent’s services in Classes 35, 38 and 42 as all the relevant factors (Canon criteria) are considered. Therefore, these goods are dissimilar to the opponent’s goods and services in Classes 9, 35, 38 and 42.

Contested services in Class 35

The contested business administration includes, as a broader category, or overlap with, the opponent’s business administration, with and without the help of electronic data bases. 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 services are business management; business management consultancy and advisory services, and the opponent’s services cover business administration, with and without the help of electronic data bases.

The line between business management and business administration is blurred, and it is sometimes very difficult to clearly distinguish between them. They both fall under the broader category of business services. As a general rule, it can be said that business administration services are performed in order to organise and run a business (clerical services), whereas business management follows a higher approach aimed at setting the common goals and the strategic plan for a commercial enterprise.

Therefore, aim of these services is primarily the same, although on different levels both help to manage all organisational issues of the business, its existence and performance on the market by implementing the strategy set for this business in all areas. Therefore, they are usually provided by the same business consultant companies who offer complex business support for entrepreneurs, thus they also target the same companies. Consequently, the contested services in question are considered similar to the opponent’s business administration, with and without the help of electronic data bases.

As regards the contested wholesale services and retail services, also on line, relating to software only a similarity to a low degree can be established between retail/sale services concerning sale of particular goods and those goods. The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. The opponent’s goods in Class 9 include, for instance, computer programmes [programs], recorded; programs (computer -) [downloadable software]; computer software platforms; computer software applications, downloadable; computer software packages. Therefore, the contested wholesale services and retail services, also on line, relating to software are similar to a low degree to these opponent’s goods.

The remaining contested advertising; online advertisements; advertising and marketing; advertisement for others on the internet; developing promotional campaigns for business; analysis of advertising response; consultancy relating to the organisation of promotional campaigns for business; business consultancy services relating to marketing, promotion and management of fund raising campaigns; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; advertising services for the promotion of e-commerce; wholesale services and retail services, also on line, relating to computers and electronic equipment; presentation of goods on communications media, for retail purposes; distribution of publicity materials, namely, flyers, prospectuses, brochures, samples; commercial trading and consumer information services and the opponent’s goods and services in Classes 9, 35, 38 and 42 do not coincide in any of the relevant factors (Canon criteria). The opponent’s goods and services are provided by the suppliers different from those of the contested services. Neither, they are supplied through the same distribution channels. The contested services and the opponent’s goods and services target various groups of consumers which do not coincide, and the services (goods) themselves as designed for different needs are of different natures, purposes, and have different methods of use. They are not complementary to, or in competition with each other. Consequently, they must be considered dissimilar.  

Contested services in Class 42

The contested IT services; development, preparing, integration of computer software; information technology [it] consultancy; programming of software for e-commerce platforms; design of communication systems; engineering services relating to the design of communications systems; research in the field of communications technology; disaster recovery services for data communications systems; computer programming for data processing and communication systems; maintenance and updating of software for communication systems; testing, analysis and monitoring of telecommunication signals; computer graphics design services; visual design; computer aided testing services; design and development of electronic data security systems; internet web site design services; consultancy relating to the design of home pages and internet sites; hosting websites on the internet; design, creation, hosting and maintenance of internet sites for third parties; cloud computing are identical to the opponent’s providing information, advice and consultancy services in the field of computer software; design, maintenance, development and updating of computer software; development of computer software application solutions; design services for data processing systems; database design and development; design and maintenance of computer sites for third parties; computer project management services; computer systems integration services; customization of computer hardware and software; computer systems integration services; data migration services; creation, design, development and maintenance of web sites for third parties; editing of computer programs; installation and maintenance of computer programs; maintenance of data bases; maintenance of websites and hosting on-line web facilities for others; application service provider (asp); cloud computing; software as a service [saas]; server hosting; hosting of internet sites; technical project studies in the field of computer hardware and software; disaster recovery services for computer systems; computer virus protection services; data security services [firewalls]; data recovery services; data conversion of computer programs and data [not physical conversion]; off-site data backup; consultancy, design, development, installation, computer-related management, updating and maintenance relating to computer software, computer software packages, software as a service (saas) for use in administrative, document and commercial management in the legal professions and by law professionals, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

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 directed at the public at large and at business customers. The goods at issue in Class 9 and services in Classes 35 and 42 are mainly specialised goods and services directed at business customers with specific professional knowledge or expertise in the respective field.

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

3. The signs

JARVIS LEGAL
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 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 word element ‘JARVIS’ that appears in the earlier mark, and the element ‘JA(A)RVIS’ of the contested sign despite its spelling is meaningful in certain territories, for example, in those countries where English language is understood; Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public within the European Union.

The first word element ‘JARVIS’ of the earlier word mark would be seen by the relevant public as a British surname or given name; as it does not involve any specific connotations in relation to the relevant goods in Class 9 and services in Classes 35 and 42 it is, therefore, distinctive. However, its second element ‘LEGAL’ would be understood according to its meaning as relating to the law, and thus it is non-distinctive for the relevant goods and services in Classes 9, 35 and 42.

The element ‘JAARVIS’ in the contested figurative sign will be understood by the relevant public as described above, although the spelling of a name ‘JAARVIS’ vary from the one in the earlier mark, it can be reasonably assumed that it may go unnoticed in the perception of the relevant public. As it is not descriptive, allusive or otherwise weak for some of the relevant goods and services of the contested sign, it is distinctive. The word ‘JAARVIS’ is written in blue standard typeface. Below is placed the expression ‘THE HEART OF INNOVATION’ in the same typeface of blue colour, however it is significantly smaller in size. Above these word elements, is a device in the form of the grey-shaded ornamental circle in centre of which is inscribed smaller shaded circle with white capital letter ‘J’. The circle device has no semantic connotations in relation to the goods and services in question, and thus it is normally distinctive. The words ‘THE HEART OF INNOVATION’, on contrary are descriptive in relation to these goods and services since will primarily be associated with a laudatory slogan indicating on an innovative nature of the goods (software e.g. in Class 9) and services (e.g. IT services in Class 42).

The element ‘JARVIS’ of the earlier mark, although it will be seen as a name which as such does not have particularly strong distinguishing power on the market, as it is distinctive in relation to the goods and services in question, and when coupled with a non-distinctive element ‘LEGAL’, must be considered as more distinctive element than the latter.

The element ‘JAARVIS’ in the contested sign could be considered clearly more distinctive than other elements, such as the laudatory expression ‘THE HEART OF INNOVATION’.

Due to its descriptive character, its positioning and its size, the latter element stands back vis-a-vis the word element JAARVIS and the figurative element.  

Moreover, as regards the contested sign it should be pointed out that, 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). This is a case as regards the contested sign in which the figurative element in the form of the ornamental circle serves only as an embellishment.

Furthermore, as the initial elements of the signs are practically the same (‘JARVIS’/’JAARVIS’) and differ only in the double letter ‘A’ of the contested sign, the following should be emphasized. 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.

Visually, the signs coincide in the letters ‘JA*RVIS’ placed in the same position in both signs. However, they differ in the additional letter ‘A’ which is double in the word ‘JA*RVIS’ of the contested sign; moreover they can be differentiated by the non-distinctive word ‘LEGAL’ in the earlier mark, and as regards the contested sign, by the expression ‘THE HEART OF INNOVATION’ and the circle device with the letter ‘J’ inside.  

Therefore, and taking into consideration almost completely coinciding element ‘JA(*)RVIS’ of the signs, and that their differing word elements (‘LEGAL’/‘THE HEART OF INNOVATION’) are non-distinctive, as well as, embellishing thus secondary  function of a circle device in the contested sign, they are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘JA(A)/RVIS’, present identically in both signs except the double letter ‘A’ in the contested sign. The pronunciation differs in the sound of the letters constituting the words ‘LE/GAL’ and ‘THE HEART OF IN/NO/VA/TION’ of the earlier sign and the contested mark respectively, which are not present in the opposite mark.

As the signs are aurally identical in their initial parts, which have much more influence on the consumers, than the remaining non-distinctive elements of both signs, they are considered aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to a name ‘Jarvis’ (surname or given name), the signs are conceptually identical. However, the signs can also be associated with other dissimilar meanings conveyed by the words ‘LEGAL’ (in the earlier mark) and ‘THE HEART OF INNOVATION’ (in the contested sign), and as both are non-distinctive elements in the signs, they are 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.

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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

The goods and services in question are partly identical, partly similar and partly dissimilar. The distinctiveness of the earlier mark is normal. The degree of attention of the general public, and that of business consumers in the relevant field, may vary from average to high.

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 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). Even for goods for which the degree of attention is high, as is the case for some of the goods in this case, consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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).

The signs are found to be visually similar to an average degree, aurally similar to a high degree and conceptually similar despite presence of additional non-distinctive elements as both refer to a ‘Jarvis’ name. They coincide almost completely in their initial element ‘JARVIS’ on the aural and conceptual level, and only the double letter ‘A’ in this element of the contested signs differentiates the signs on the visual level. Due to the reasons mentioned in the section c) further differing, but also non-distinctive elements  ‘LEGAL’ and ‘THE HEART OF INNOVATION’ cannot have a greater impact on the consumers that coinciding and more distinctive initial element ‘JA(*)RVIS’; neither as the figurative element of the grey circle device of the contested sign which is secondary in the contested sign.

In the global assessment of the conflicting signs on account is taken 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).

As likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings, and this can be the result of existence of the marks in question on the same market, it is concluded that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark as there is a likelihood of confusion on the part of the relevant English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The rest of the contested goods and 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 goods and services cannot be successful.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent also based its opposition on a sign used in the course of trade in France, namely the company name ‘JARVIS’ used for the following services in respective Class 42:

Advice, assistance, training in the field of computer, software and information technology; creation, development and distribution of computer software and hardware

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection of that right.

Finally, according to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case the evidence filed by the opponent such as an extract from the Registry of Commercial Court of Nanterre concerning the other sign in question is not in the language of the proceedings.

On 19/07/2016 the opponent was given two months (until 24/11/2016), commencing after the ending of the cooling-off period, to submit the required evidence and respective translations, which has been subsequently extended at the request of the opponent. This time limit expired on 24/03/2017.

The opponent did not submit the necessary translation regarding of the earlier other sign on which the opposition under Article 8(4) EUTMR is based.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Consequently, the abovementioned evidence cannot be taken into account, and the opponent failed to establish use in the course of trade of the sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR referred above is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Andrea VALISA

Birgit FILTENBORG

Gregor SCHNEIDER

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.