OPPOSITION No B 2 399 536

Medius AB, Platensgatan 8, 582 20 Linköping, Sweden (opponent), represented by Awapatent AB, Jakobsbergsgatan 36, 111 44 Stockholm, Sweden (professional representative)

a g a i n s t

Medius GmbH, Gertrudenstraße 19, 48149 Münster, Germany (applicant), represented by Prof. Hintermayr & Partner, Landstr. 12 / Arkade, 4020 Linz, Austria (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 399 536 is partially upheld, namely for the following contested goods and services:

Class 9: Software in the field of conflict management and organizational development.

Class 42: Development, Implementing and maintaining software.

2.        European Union trade mark application No 12 751 913 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 751 913. The opposition is based on the Swedish company name ‘MEDIUS AB’. The opponent invoked Article 8(4) EUTMR.

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

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.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 01/04/2014. Therefore, the opponent was required to prove that the use of the sign on which the opposition is based – that is, the Swedish company name ‘MEDIUS AB’ – in the course of trade was of more than local significance in Sweden prior to that date. The evidence must also demonstrate that the opponent’s sign has been used in the course of trade for development, sale and marketing of products and tools for streamlining processes based on the use of information technology, and thereto related activities.

On 30/08/2016, the opponent filed, in particular, the following evidence with extracts extracts translated into English:

• A certificate of registration of the business name ‘Medius AB’ for the company formed on 07/09/2001 (enclosure 1).
• Annual reports from 2009 to 2014 for the company Medius (enclosures 5, 16, 46, 52, 58 and 63).
• Fifteen invoices dated 04/01/2010 to 22/01/2014 addressed to clients in Sweden (enclosures 9, 17 to 25, 50, 51, 53, 59 and 60).
• Thirteen invoices dated 28/02/13 to 25/03/2014 for different types of marketing activities, products and advertising activities of the opponent, such as business cards, brochures, online advertising and promotional gifts (enclosures 26 to 37).
• Videos posted on YouTube in 2013 and 2014 (enclosures 11, 39 and 40).
• A webinar published on LinkedIn in 2014 (enclosure 12).
• Press releases and articles dated 2010 to 2014 published on the opponent’s website and also independent sources with information on the opponent’s activities, such as the launch of new products or the acquisition of new clients (enclosures 6, 13, 41 to 45, 47 to 49, 54 to 57, 61 and 62).
• A market survey conducted in March 2014 by Inspectrum AB, an analysis company in the field of IT and telecommunications (enclosure 7).

The annual reports show an important and steady increase in the opponent’s turnover and sales figures, and its international growth over the years in terms of employees, offices and customers. The market survey states that the opponent is the largest and one of the fastest growing invoice automation providers in Sweden and internationally. It gives information on the number of customers, suppliers, users and processed invoices.

The annual reports and the invoices show that the place of use is Sweden and that the opponent also has clients in Denmark, Poland, the Netherlands, the United Kingdom and France. This can be inferred from the language of the documents (Swedish), the currency mentioned (Swedish kronor) and some addresses in Sweden.

The evidence is all dated before the relevant date.

The press releases define the opponent’s products in the following ways: ‘invoice automation system’, ‘software solution for management and automation of the complete procure-to-pay process (contract management, reporting, attestation and procurement)’ and ‘leading business solution that simplifies and automates business processes such as supplier invoice automation, purchase-to-pay matching’.

The invoices relate to services such as ‘licensing of software named “Mediusflow”, or “Readsoft”’, ‘consultancy and advisory services’, ‘implementing and maintaining software’, ‘software configuration’, ‘support, project management and operation information’, ‘management of analysis results’ and ‘development of script for automation of invoice management, performance tests and improvement’.

The videos posted on YouTube and the webinar advertise the opponent’s product Mediusflow as an ‘IT based software solution for invoice automation including matching, validation, approval, deviation and reporting of invoices’. The annual reports define the same product as ‘a cloud based SaaS solution’ or ‘electronic invoice processing’.

Therefore, the evidence demonstrates that the opponent’s company name ‘Medius’ has been used in the course of trade as a word or in the figurative form  for the development, sale and marketing of specialised software solutions for the automation of business processes.

The evidence provides sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use. It is clear from the evidence that the opponent’s trade under the company name at issue was of more than mere local significance as can be seen from the addresses indicated in the invoices, the opponent’s international clients, etc.

Consequently, the Opposition Division concludes that the use of the opponent’s company name in the course of trade was of more than local significance in Sweden for development, sale and marketing of products and tools for streamlining processes based on the use of information technology, and thereto related activities before the filing date of the contested trade mark.

2. The right under the applicable law

The opponent submitted the Swedish Trademarks Act (2010:1877) and the Trade Names Act (1974:156) and translations of their relevant sections (enclosures 3 and 4).

As shown in the certificate for registration (enclosure 1), the opponent’s company was registered on 10/10/2001 and the trade name was registered on 24/09/2004.

A company name is the official designation of an incorporated undertaking, in most cases registered in the respective national commercial register. If under national law registration is a prerequisite for protection, registration must be proven. Company names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

In the present case, the provisions of the laws governing the sign in question confer on the opponent’s company name exclusive rights, such as preventing the use of subsequent confusingly identical or similar trade marks, trade names or business signs for identical or similar goods or services.

The evidence submitted demonstrates that the opponent is entitled to prohibit the use of a subsequent trade mark and highlights the conditions under which the opponent’s company name may prevail and be enforced vis-à-vis subsequent trade marks.

Article 8(4) EUTMR explicitly confers on the proprietor of the mark the right to prohibit use of a subsequent mark. The Office, however, applies the provision broadly, based on an interpretation oriented by its purpose, meaning that an opposition based on provisions of national law prohibiting a later registration can also be accepted in some cases. In several cases, the General Court and the Boards of Appeal accepted that a provision prohibiting registration of a subsequent trade mark can be validly invoked within an opposition pursuant to Article 8(4) EUTMR.

Therefore, the opponent provided sufficient information on the legal protection granted to its company name and the conditions to be fulfilled to be able to prohibit the use of the contested trade mark.

3. The opponent’s right vis-à-vis the contested trade mark

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 opponent’s company name is used for development, sale and marketing of products and tools for streamlining processes based on the use of information technology, and thereto related activities.

The opposition is directed against the following goods and services of the contested trade mark:

Class 9: Software in the field of conflict management and organizational development.

Class 35: Business consultancy and advisory services; Organization consultancy.

Class 42: Design agency services, Development, Implementing and maintaining software.

Class 45: Mediation.

Contested goods in Class 9

Software is composed of programs, routines and symbolic languages that control the functioning of the hardware and direct its operation. The opponent’s company name is used for development of products and tools for streamlining processes based on the use of information technology, which, in practice, is or includes programming. Programming is the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations. Therefore, the opponent’s programming is closely linked to the contested software in the field of conflict management and organizational development. This is because companies developing and creating software will also commonly provide computer- and/or software-related services (e.g. tailoring the use of their software product(s) for specific businesses or markets, keeping the system updated and so on). Although the natures of the goods and services are not the same, both the relevant publics and the usual producers/providers of the goods and services are the same. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

Contested services in Class 35

The contested consultancy and advisory services refer to providing advice and replies to queries related to business and organisation. The advice and replies are tailored to the circumstances or needs of a particular user and recommend specific courses of action for proper business management and/or administration. The opponent’s services consist in programming, and although they are intended to be used by businesses, this is not conclusive for a finding that there is a similarity between the opponent’s and the contested services. These services belong to different areas of activity and have different purposes. They also satisfy different needs and are provided by different types of companies. Furthermore, these services are neither complementary nor in competition. Consequently, the contested business consultancy and advisory services; organization consultancy are dissimilar to the opponent’s services.

Contested services in Class 42

The contested development, implementing and maintaining software includes, as a broader category, or overlaps with the opponent’s development of products and tools for streamlining processes based on the use of information technology. 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 design agency services are related to graphic design, creative agencies and advertising or marketing, and have nothing in common with the opponent’s services. They belong to different areas of activity and they have different purposes. They also satisfy different needs and are provided by different types of companies. Furthermore, these services are neither complementary nor in competition. Consequently, the contested design agency services are dissimilar to the opponent’s development, sale and marketing of products and tools for streamlining processes based on the use of information technology, and thereto related activities.

Contested services in Class 45

The contested mediation services involve intervention in a dispute in order to resolve it. These are arbitration services provided by specialists to mediate between third parties in conflict; they have nothing in common with the opponent’s services. These services belong to different areas of activity and have different purposes. They also satisfy different needs and are provided by different types of companies. Furthermore, these services are neither complementary nor in competition. Consequently, the contested mediation is dissimilar to the opponent’s development, sale and marketing of products and tools for streamlining processes based on the use of information technology, and thereto related activities.

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 specialised and directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high.

3.        The signs

MEDIUS AB	MEDIUS
Earlier sign	Contested sign

The relevant territory is Sweden.

The element ‘AB’ of the earlier mark stands for ‘Aktiebolag’, which in English means ‘private limited liability’, and indicates the legal form of companies. Therefore, the relevant public will disregard this element, as it merely gives information about the kind of company ‘MEDIUS’ is.

The element ‘MEDIUS’ of both signs has no meaning for the relevant public and is therefore distinctive.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

Considering the above, the signs are visually and aurally identical, as the public will not consider or pronounce the element ‘AB’ of the earlier mark.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

4.        Global assessment of the conditions under the applicable law

For the purpose of the global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

In the present case, it is evident that a likelihood of confusion exists, as the signs are visually and aurally identical and some of the contested goods and services are either identical or similar.

Consequently, all the conditions required by the Swedish national law are fulfilled.

Some of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of the likelihood of confusion provisions, the opposition based on Article 8(4) EUTMR and directed at these services cannot be successful.

4. Conclusion

Considering all the above, the Opposition Division finds the opposition is well founded on the basis of the opponent’s earlier sign insofar as it is directed against the goods in Class 9 and some of the services in Class 42.

The opposition is not successful insofar as the remaining services 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

Fabian GARCIA QUINTO

Loreto URRACA LUQUE

Elisa ZAERA CUADRADO

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.