OPPOSITION DIVISION
OPPOSITION No B 2 777 418
MyJoVE Corporation, One Alewife Center, Suite 200, Cambridge, MA 02140, United
States of America (opponent), represented by Notarbartolo & Gervasi GmbH,
Bavariaring 21, 80336 Munich, Germany (professional representative)
a g a i n s t
Jan Kurrus, Austraße 19, 79288 Gottenheim, Germany (applicant), represented by
Christian Konle, Romanstraße 33, 80639 Munich, Germany (professional
representative).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 777 418 is upheld for all the contested goods and services,
namely:
Class 9: Software, namely firmware, computer operating systems, computer
software; computer software for booking accommodation; computer software
for accommodation management; computer software for biometric systems for
the identification and authentication of persons; identity cards, encoded;
chronographs (time recording apparatus); time clocks (time recording devices);
regulating apparatus, electric; checking (supervision) apparatus and
instruments; electromotive testing devices; access control installations
(automatic -); electrical access control apparatus; databanks; computer
software for authorising access to data bases; computer search engine
software; servers for web hosting; smartglasses; smartwatches; electronic
notebooks; downloadable printable planners and organizers; apparatus for
navigation; navigating apparatus (electronic -); software for GPS navigation
systems.
Class 38: Electronic communication by means of chatrooms, chat lines and
Internet forums; forums [chat rooms] for social networking; computer
transmission of information accessed via a code or a terminal.
Class 41: Advisory services relating to education; publication of educational
texts; educational examination; provision of educational examination facilities;
publishing and reporting.
Class 42: Technical inspection services; programming of software for online
portals, chat rooms, chat lines and online forums; development of data bases;
operating search engines; rental of computers and computer software; rental of
web servers; server hosting; web servers; recovery of computer data; IT
services; server administration; development of software for data and
multimedia content conversion from and to different protocols; technical project
planning; engineering design and consultancy.
Class 44: Medical information retrieval services; providing online medical
record services; maintaining personal medical history records and files.
Decision on Opposition No B 2 777 418 page: 2 of 11
2. European Union trade mark application No 15 326 572 is rejected for all the
contested goods and services. It may proceed for the remaining goods and
services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 15 326 572 for the word mark ‘JOVE’,
namely against all the goods and services in Classes 9, 38, 41, 42 and 44. The
opposition is based on the following earlier marks:
– European Union trade mark registration No 6 589 361 for the word mark
‘JOVE’;
– international trade mark registration No 1 254 102 designating the European
Union, for the figurative mark .
The opponent invoked Article 8(1)(a) (only in relation to earlier EUTM No 6 589 361)
and 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.
a) The goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark No 6 589 361 (hereinafter ‘the earlier EUTM’)
Class 38: Telecommunications, in particular providing access to databases,
information, platforms or portals on the Internet, operating chatlines, chatrooms and
forums on the Internet, collating and supplying of scientific information, being wire
services.
Class 41: Education; providing of training; entertainment; sporting and cultural
activities, in particular publication of printed matter, periodicals and books, including
in electronic form and on the Internet, other than for advertising purposes, arranging
and conducting of courses, seminars, workshops (providing of training), including in
Decision on Opposition No B 2 777 418 page: 3 of 11
electronic form and on the Internet, practical training demonstrations, services of a
publishing firm, except printing, film and video production, including in studios, film
and video rental.
Class 42: Scientific and technological services and research and design relating
thereto, in particular database services, namely inquiries, research in databases and
on the Internet for science and research; industrial analysis and research services;
design and development of computer hardware and software.
Class 45: Film, television and video licensing.
International registration No 1 254 102 designating the European Union (hereinafter
‘the earlier IR’)
Class 9: Downloadable electronic publications and downloadable multimedia files
containing video, relating to science, medicine and technology, and social sciences.
Class 41: Providing a web site featuring non-downloadable instructional videos and
non-downloadable electronic publications in the nature of electronic magazines in the
field of science, medicine and technology, and social sciences, for research, training
and educational purposes; publishing of electronic publications; film and video
production.
Class 42: Providing an on-line searchable database featuring information in the field
of biological, medical, physical, chemical, earth, environmental, and social sciences;
providing an on-line searchable database featuring information in the field of
engineering; providing an on-line searchable database featuring medical and
scientific research information in the field of clinical trials.
Class 44: Providing an on-line searchable database featuring information in the field
of clinical medicine.
The contested goods and services are the following:
Class 9: Software, namely firmware, computer operating systems, computer
software; computer software for booking accommodation; computer software for
accommodation management; computer software for biometric systems for the
identification and authentication of persons; identity cards, encoded; chronographs
(time recording apparatus); time clocks (time recording devices); regulating
apparatus, electric; checking (supervision) apparatus and instruments; electromotive
testing devices; access control installations (automatic -); electrical access control
apparatus; databanks; computer software for authorising access to data bases;
computer search engine software; servers for web hosting; smartglasses;
smartwatches; electronic notebooks; downloadable printable planners and
organizers; apparatus for navigation; navigating apparatus (electronic -); software for
GPS navigation systems.
Class 38: Electronic communication by means of chatrooms, chat lines and Internet
forums; forums [chat rooms] for social networking; computer transmission of
information accessed via a code or a terminal.
Class 41: Advisory services relating to education; publication of educational texts;
educational examination; provision of educational examination facilities; publishing
and reporting.
Decision on Opposition No B 2 777 418 page: 4 of 11
Class 42: Technical inspection services; programming of software for online portals,
chat rooms, chat lines and online forums; development of data bases; operating
search engines; rental of computers and computer software; rental of web servers;
server hosting; web servers; recovery of computer data; IT services; server
administration; development of software for data and multimedia content conversion
from and to different protocols; technical project planning; engineering design and
consultancy.
Class 44: Medical information retrieval services; providing online medical record
services; maintaining personal medical history records and files.
An interpretation of the wording of the lists of goods and services is required to
determine the scope of protection of these goods and services.
The terms ‘in particular’ and ‘including’ used in the applicant’s lists of goods and
services, indicate that the specific goods and services are only examples of items
included in the category and that protection is not restricted to them. In other words,
they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride,
EU:T:2003:107).
However, the term ‘namely’, used in both the applicant’s and the 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 goods
and services specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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, namely firmware, computer operating systems, computer
software; computer software for booking accommodation; computer software for
accommodation management; computer software for biometric systems for the
identification and authentication of persons; computer software for authorising
access to data bases; computer search engine software; software for GPS
navigation systems are similar to the opponent’s telecommunications, in particular
providing access to databases, information, platforms or portals on the Internet,
operating chatlines, chatrooms and forums on the Internet, collating and supplying of
scientific information, being wire services in Class 38 (earlier EUTM).
Since the 1990s, the boundary between telecommunications equipment and IT
hardware/software has become blurred as a result of the growth of the internet and
its increasing role in the transfer of telecommunications data. Equipment used for
telecommunication purposes, such as modems, mobile phones, landline telephones,
answering machines, fax machines, pagers, routers, is also considered to cover the
telecommunications control software that must be in place to successfully support
telecommunications activities. Any software that provides the ability to perform
telecommunication activities and operations can be considered telecommunications
Decision on Opposition No B 2 777 418 page: 5 of 11
control software. Clearly, there is a link between the abovementioned goods in
Class 9 and telecommunication services in Class 38. These goods and services are
similar, given their complementary character; although their natures are different,
their purpose and distribution channels are the same (12/11/2008, T-242/07, Q2web,
EU:T:2008:488, § 24-26).
The contested identity cards, encoded are cards designed for storing and sharing
data. The contested databanks are large repositories of computer data on a
particular topic, sometimes formed from more than one database, that are accessible
by many users.
The contested identity cards, encoded; databanks are similar to the opponent’s
design and development of computer hardware and software in Class 42 (earlier
EUTM). These goods and services may have the same origin, given that
manufacturers of hardware also commonly provide computer- or software-related
services (as a means of keeping the system updated, for example). Although the
nature of the goods and services is not the same, both the relevant public and the
usual producers/providers of the goods and services coincide. Furthermore, these
goods and services are complementary.
The contested servers for web hosting are similar to the opponent’s services of
design and development of computer hardware and software in Class 42 (earlier
EUTM). These goods and services belong to the same field or related fields and can
be offered by the same undertakings to the same end users. They can also be
offered through the same commercial channels. Finally, they are complementary.
The contested smartglasses are wearable computer glasses that provide additional
information on what the wearer sees. The contested smartwatches are computerised
wristwatches. The contested smartglasses; smartwatches; electronic notebooks are
similar to the opponent’s design and development of computer hardware in Class 42
(earlier EUTM). All these contested goods are computers/computerised. Therefore,
these goods and services are produced/provided by the same undertakings and are
sold in the same outlets. Furthermore they are complementary. In addition, the
opponent’s services and at least the contested electric notebooks target the same
public.
The contested apparatus for navigation; navigating apparatus (electronic -) are
similar to the opponent’s scientific and technological services and research and
design relating thereto, in particular database services, namely inquiries, research in
databases and on the Internet for science and research in Class 42 (earlier EUTM).
These goods and services are complementary. Moreover, they have the same
distribution channels and target the same public.
The contested chronographs (time recording apparatus); time clocks (time recording
devices); regulating apparatus, electric; checking (supervision) apparatus and
instruments; electromotive testing devices; access control installations (automatic -);
electrical access control apparatus are similar to a low degree to the opponent’s
scientific and technological services and research and design relating thereto, in
particular database services, namely inquiries, research in databases and on the
Internet for science and research in Class 42 (earlier EUTM). These goods and
services are provided/manufactured by the same companies. Furthermore, they are
sold in the same outlets and have the same relevant public.
Decision on Opposition No B 2 777 418 page: 6 of 11
The contested downloadable printable planners and organizers are similar to a low
degree to the opponent’s downloadable electronic publications and downloadable
multimedia files containing video, relating to science, medicine and technology, and
social sciences (earlier IR). These goods have the same nature, as they are
downloadable files. Furthermore, they may have similar purposes or even identical
purposes, as the contested goods form a broad category and, therefore, may relate
to science, medicine and technology, and social sciences. Furthermore, these goods
can be sold by the same IT specialists.
Contested services in Class 38
The contested electronic communication by means of chatrooms, chat lines and
Internet forums; forums [chat rooms] for social networking; computer transmission of
information accessed via a code or a terminal are included in the broad category of,
or overlap with, the opponent’s telecommunications, in particular providing access to
databases, information, platforms or portals on the Internet, operating chatlines,
chatrooms and forums on the Internet, collating and supplying of scientific
information, being wire services (earlier EUTM). Therefore, they are identical.
Contested services in Class 41
The contested educational examination is included in the broad category of the
opponent’s education (earlier EUTM). Therefore, they are identical.
The contested publication of educational texts overlaps with the opponent’s
publishing of electronic publications (earlier IR) insofar as they both include the
services of electronic publication of educational texts. Therefore, they are identical.
The contested publishing and reporting include, as a broader category, or overlap
with, the opponent’s publishing of electronic publications (earlier IR). 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 provision of educational examination facilities is included in, or at least
overlaps with, the opponent’s education (earlier EUTM). Education is a broad
category and entities such as universities provide services consisting of teaching and
providing examination facilities to students. Therefore, they are identical.
The contested advisory services relating to education and the opponent’s education
(earlier EUTM) are closely related. These services, in addition to being
complementary, may be provided by the same entities/undertakings. Furthermore,
their purpose is the same. Therefore, they are similar.
Contested services in Class 42
The opponent’s scientific and technological services and research and design
relating thereto (earlier EUTM) are various scientific and technology-related activities
that are concerned with research and experimental development and contribute to
the generation, dissemination and application of scientific and technical knowledge.
These services include mainly services provided by persons, individually or
collectively, in relation to the theoretical and practical aspects of complex fields of
activity; such services are provided by members of professions such as chemists,
physicists, engineers, computer programmers. They are in particular the services of
Decision on Opposition No B 2 777 418 page: 7 of 11
engineers who undertake evaluations, estimates, research and reports in scientific
and technological fields.
As already indicated, the words ‘in particular’ are used only to give examples.
Therefore, it has to be considered that the contested technical inspection services;
technical project planning; engineering design and consultancy are included in the
broad category of the opponent’s scientific and technological services and research
and design relating thereto, in particular database services, namely inquiries,
research in databases and on the Internet for science and research (earlier EUTM).
Therefore, these services are identical.
The contested programming of software for online portals, chat rooms, chat lines and
online forums; development of data bases; operating search engines; rental of
computers and computer software; rental of web servers; server hosting; web
servers; recovery of computer data; IT services; server administration; development
of software for data and multimedia content conversion from and to different
protocols and the opponent’s design and development of computer hardware and
software (earlier EUTM) can be grouped under the general category of IT services,
which are dedicated to the study or use of computers, storage, networking and other
physical devices, infrastructure and processes to create, process, store, secure and
exchange all forms of electronic data. Consequently, they target the same
consumers, are provided through the same distribution channels and are generally
rendered by the same kind of undertakings (employing professionals in the IT field),
which normally provide a full spectrum of IT solutions tailored to the needs of their
customers. Therefore, these services are at least similar.
Contested services in Class 44
The contested medical information retrieval services; providing online medical record
services; maintaining personal medical history records and files are at least similar to
a high degree to the opponent’s providing an on-line searchable database featuring
information in the field of clinical medicine (earlier IR). These services have the same
nature and purpose. Furthermore, they target the same public, consisting of medical
specialists, and they are likely to be provided by the same companies.
b) 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 at specialists in various fields (in
particular medicine and IT).
The degree of attention will vary from average to high, depending on the specialised
nature of the goods and services at issue. For instance, in relation to services in
Class 44, the degree of attention will be higher, given their specialised nature.
Decision on Opposition No B 2 777 418 page: 8 of 11
c) The signs
The opposition is based on two earlier marks, the word mark ‘JOVE’ and the
figurative mark . The opponent’s word mark and the
contested sign are identical. In relation to the word mark, the decision moves directly
to the global assessment; it continues below in relation to the earlier international
registration.
JOVE
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 contested sign is the single-word mark ‘JOVE’, while the earlier mark is a slightly
stylised figurative mark ‘JoVE’, consisting of the letters ‘J*VE’ in upper case and the
letter ‘o’ in lower case.
For part of the public, ‘JOVE’ has no meaning in relation to the goods and services at
issue and for part of the public it refers to Jupiter, the god of the sky and thunder and
king of the gods. For both parts of the public, ‘JOVE’ has no meaning in relation to
the goods and services and has an average level of distinctiveness.
Neither of the marks at issue has any element that could be considered more
dominant than the others.
Visually, the signs coincide in the letters ‘JOVE’.
As word marks are protected regardless of their typeface, the applicant could be
allowed to use his word mark as ‘JoVE’. Therefore, the fact that the earlier trade mark
is registered with one lower case letter is irrelevant.
Consequently, as they differ only in the slight stylisation of the earlier mark, the signs
are visually similar to a high degree.
Decision on Opposition No B 2 777 418 page: 9 of 11
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
‘JOVE’.
Therefore, the signs are aurally identical.
Conceptually, for part of the public in the relevant territory, 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 the other part of the public, the marks refer to Jupiter and are conceptually
identical.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
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).
In the present case, the conflicting signs are visually similar to a high degree and
aurally identical. For part of the public the signs are also conceptually identical
whereas for the other part the public the conceptual comparison has no influence on
the assessment.
The goods and services are partly identical and partly similar to various degrees.
Moreover, account is taken of the fact that average consumers rarely have the
chance to make a direct comparison between different marks, but must trust in their
imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to
rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel,
EU:T:2013:605, § 54).
Decision on Opposition No B 2 777 418 page: 10 of 11
In the present case, the signs are extremely similar overall, given that the only
difference results from the slight stylisation of the earlier mark. Therefore, even if
some of the contested goods and services are similar only to a low degree to the
opponent’s goods and services, this lower degree of similarity is indisputably
outweighed by the strong similarity between the signs.
These findings apply a fortiori in relation to the earlier word mark ‘JOVE’, which is
identical to the contested sign.
Considering all the above, there is a likelihood of confusion on the part of the public.
The earlier European Union trade mark registration and the contested sign are
identical and some of the contested services, as established above in section a) of
this decision, are identical to the services of the earlier European Union trade mark
registration. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR
for these services. Furthermore, the remaining contested goods and services were
found to be similar to those covered by the earlier trade marks. Given the identity of
the signs, there is a likelihood of confusion within the meaning of Article 8(1)
(b) EUTMR and the opposition must also be upheld for these goods and services.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 6 589 361 and international trade mark registration
No 1 254 102 designating the European Union. It follows that the contested trade
mark must be rejected for all the contested goods and services.
COSTS
According to Article 109(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, he must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Gueorgui IVANOV Patricia LOPEZ
FERNANDEZ DE
CORRES
Benoit VLEMINCQ
Decision on Opposition No B 2 777 418 page: 11 of 11
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.