OPPOSITION No B 2 243 189

 

Kabushiki Kaisha NTT Data (NTT Data Corporation), 3-3 Toyosu 3-Chome  Koto-Ku, Tokyo  135-6033, Japan (opponent), represented by Marks & Clerk LLP, 90 Long Acre, London  WC2E 9RA, United Kingdom (professional representative)

 

a g a i n s t

 

Nurmeksen Työstö ja Tarvike Oy, Pöpöläntie 14, 75500 Nurmes, Finland (applicant), represented by Kolster Oy AB, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative).

 

On 31/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 243 189 is partially upheld, namely for the following contested services:

 

Class 37: Construction, maintenance and repair of stoneworking machines as well as installation thereof.

 

2.        European Union trade mark application No 11 752 466 is rejected for all the above services. It may proceed for the remaining goods.

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 11 752 466. The opposition is based on European Union trade mark registration No 10 596 286. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

 

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

 

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

 

 

1. The goods and services

 

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

 

Class 9: Telecommunication devices and apparatus; Recording media, such as IC cards, magnetic tapes, magnetic data media, and optical data media stored with computer programs downloadable by communication networks; Recording media, such as IC cards, magnetic tapes, magnetic data media, and optical data media stored with other computer programs; Computer programs; Electronic machines, apparatus and their parts, namely, computer hardware, computer peripherals, and computer networking hardware, data processing equipment and computers; Recording media, such as magnetic data media, optical data media, magnetic tapes and IC cards, not recorded; Electronic publications downloadable via communication networks and other electronic publications; Recording media, such as magnetic data media, optical data media and optical magnetic data media, recorded with text and image information of maps and photographs; Downloadable music files recorded with sound or music through communication network or the Internet; Downloadable image files through communication network or the Internet; Computer programs used for managing, operating, monitoring and developing cloud computing and remote computing networks, and for the transmission of information and data within cloud computing networks; Computer networks infrastructure operating system software; Computer programs for use in managing the accounting, billing, patient records, management and human resources records and functions of both long-term care and acute care facilities; Computer software to facilitate data exchange and manipulation across multiple devices, namely, computers, smartphones and other hand-held or fixed data processing systems.

 

Class 35: Advertising by communication networks; Advertising and providing information thereof by means of a global computer network; Business management analysis or business consultancy; Providing information for corporate personnel affairs; Providing information for corporate organization; Providing information for corporate profiles; Providing business information; Providing economic statistical information; Providing market research statistical information; Providing market research information about customers; Management for others of customer information; Providing information on business management and market research by marketing using the Internet or mobile telephone communication or other communication means; Marketing research and consultancy relating thereof; Providing information for the sales of goods by the Internet or mobile telephone communication or other communication means and providing information for other sales of goods; Brokerage for contracts of the sales of goods by the Internet or mobile telephone communication or other communication means; Providing information for customer management, sales management, receipt management, payment management, billing management, order-receiving and placement management, stock management of goods by the Internet or mobile telephone communication or other communication means; Systemization and compilation of information into computer databases by e-mail addresses, user IDs and passwords; Systemization and compilation of information into computer databases; Preparation of financial statements; Office functions, including filing in particular of documents or magnetic tapes; Agency of office function using the Internet or mobile telephone communication and other communication means; Providing office works information; Operation of computers and office machines for others; Human resource consulting services; Business process outsourcing services; Outsourcing services; Business investigations; Business research; Business appraisals; Commercial, industrial, banking and service industry management assistance.

 

Class 37: Installation of computer hardware and software systems, and providing information relating to the same; Installation of communication apparatus for remote communication network system and providing information relating to the same; Construction and providing information relating to the same; Construction consultancy; Installation, maintenance and repair of electronic machines and apparatus and of telecommunication machines and apparatus, used for computer communication networks, and providing information relating to the same; Installation, maintenance and repair of telecommunication networks, telecommunication machines and apparatus, and providing information relating to the same; Installation, maintenance and repair of electronic machines and apparatus, and providing information relating thereto.

 

Class 38: Telecommunication (other than broadcasting); Communication of message, music, images, document and data via the Internet or cellular telephones and other communication means, and providing information relating thereto; Telecommunication of data using the Internet or cellular telephones and other communication means, and providing information relating thereto; Providing access to communication networks using the Internet or cellular telephones and other communication means, and providing information relating thereto; Consulting services relating to the provision of access to communication networks using the Internet or cellular telephones and other communication means; Agency services for the access to communication networks using the Internet or cellular telephones and other communication means, and providing information relating thereto; Transmission of sound, text data and images, and providing information relating thereto; Transmission of images and sound on demand, and providing information relating thereto; Communication by computers terminal and other communication machines and apparatus, and providing information relating thereto; Electronic mail services and providing information relating thereto; Automatic redirection of electronic mail and providing information relating thereto; Communication by electronic bulletin boards and providing information relating thereto; Communication by satellites and providing information relating thereto; Providing access to databases by the Internet, mobile telephone or other communication means.

 

Class 42: Computer software design, computer programming, or maintenance of computer software; Consultancy, instruction and providing information relating to computer software design, computer programming, or maintenance of computer software; Computer system design, creating or maintenance of computer systems; Consultation, instruction and providing information relating to computer system design, creating or maintaining of computer systems; Providing technical information relating to computer software design, computer programming, or maintenance of computer software using the Internet, mobile telephone communication or other communication means; Designing, creating or maintaining home pages for others on the Internet; Providing information relating to designing, creating and maintaining of computer programs against computer virus; Providing information relating to designing, creating and maintaining of computer programs for computer network security; Consulting services relating to security on communication network by the Internet, mobile telephone communication or other communication means; Identification of electronic commerce users; Inspection, verification and authentication of existence of falsification of contents of electronic information; Encryption of data for computers; On-line identification of registered users; Identification and collation with personal data of communication network users; Providing information relating to designing, creating and maintaining of computer programs used for personal identification system using fingerprint; Providing search engines by the Internet, mobile telephone communication or other communication means; Conversion of sound, image and text information to sound, image and text signals by computers; Data conversion to computer databases; Electronic interchange of photo image in data form; Information processing by computers; Remote monitoring of computer systems; Expansion and addition of functions and configuration of computer programs and computers (including central processing units and electronic circuits, magnetic discs and magnetic tapes storing computer programs and other peripheral equipment); Verification of connection between computers; Inspection of checking the operation of computer programs on the computers; Computer consulting and instruction concerning maintenance and installation of computer programs to apparatuses using computer programs or apparatuses used by computer systems; Rental of computers (including central processing units and electronic circuits, magnetic discs and magnetic tapes storing computer programs and other peripheral equipment); Rental of computer program; Providing temporary use of non-downloadable computer programs and providing information relating thereto; Rental of servers; Rental of memory areas of servers for communication networks; Preparation of manuals relating to computer programs and computers (including central processing units and electronic circuits, magnetic discs and magnetic tapes storing computer programs and other peripheral equipment); Technical advice relating to performance, operation of computers and other machines that require high level of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them; Providing information on the introduction of computers for company rationalization; Cloud computing; Computer system integration services; Consulting services in the field of cloud computing; Application service provider (ASP), namely, providing, hosting, managing, developing, and maintaining applications, software, web sites and databases, and software as a service (SaaS) services; Data migration; Computer security service; Services in the field of science and technology, such as research and development related thereto; Industrial analysis and research services; Research and development of computer technologies; Quality control; Enterprise resource planning implementation services, including the definition, acquisition and implementation of management information systems.

 

The contested goods and services are the following:

 

Class 7: Stoneworking machines.

 

Class 37: Construction, maintenance and repair of stoneworking machines as well as installation thereof.

 

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 7

 

As can be gleaned from the wording of the goods and services covered by the competing marks listed above, the goods and services of the opponent mainly relate to the ICT sector whereas the goods and services of the contested mark relate to the stone working industry.

 

When comparing the contested stoneworking machines with the opponent’s goods no link can be established apart from the fact that both the applicant’s goods and the opponent’s goods may be powered by electricity. However, their nature and purpose is very different. The opponent’s goods are data carriers, data processing equipment, communication devices, software and the like and used for the collection, transfer, storage or processing of data, while the applicant’s stoneworking machines are mechanical by nature and used to work stone. Due to these different purposes and fields of application they are not interchangeable and therefore cannot be in competition either.

 

The opponent argues that the applicant’s goods could conceivably be controlled by some of the goods covered by the earlier mark such as software and/or electrical control mechanisms for use by an operator. However, this does not make the competing goods similar. The stoneworking machines target the end-users of these machines, whereas any embedded software is aimed at the actual manufacturer of the machines they are incorporated in (16/05/2013, T 80/11, Ridge Wood, EU:T:2013:251, § 29 and the case-law cited). The stoneworking machines are not complementary to any of the opponent’s goods in Class 9 either, since they can perfectly work on their own. Therefore, the opponent’s goods are not indispensable or important for the use of the applicant’s goods in such a way that consumers may think that responsibility for the production of these goods lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44).  Moreover, they also differ in their pertinent sales distribution channels and origin.

 

A similar reasoning applies when comparing the contested goods with the opponent’s services. The latter are services in the field of telecommunication (Class 38), IT (Class 42), business support (Class 35) and installation, maintenance and repair services of ICT goods (Class 37), whereas the contested stoneworking machines are goods used for cutting stone. As a consequence they cannot be in competition and differ in their pertinent sales distribution channels and origin.

 

There is no complementarity between the goods and services either, since the contested goods are not indispensable for the use of the opponent’s services or vice versa. Even though the stoneworking machines may be the object of the opponent’s advertising services, the relevant public will not think that these machines are produced by the advertising company. Similarly there is no complementary relationship with the opponent’s installation, maintenance and repair services either, since these services relate to goods in the ICT sector; not stoneworking machines. It is noted that this may not necessarily be the case for the earlier installation, maintenance and repair of electronic machines and apparatus which is not limited to IT goods. However, the term electronic machines is vague, covering machines with different characteristics used for all kinds of purposes. Consequently, without a further clarification by the opponent as to the type of electronic machines covered by the services, it cannot be determined to what market sector the earlier services belong and, therefore, which public they address and which levels of technical capabilities and know-how are required to carry out the services.

 

As stated in the Office’s Guidelines on Comparison of Goods and Services, where the Office is unable to clearly determine the exact scope of protection of vague terms, the vagueness of the wording is not a sufficient basis in itself for arguing in support of identity or similarity. Since the competing goods and services do not have the same nature nor purpose, and bearing in mind the specificity of stoneworking machines, that they are mechanical by nature, as well as the particularities of the market sector they belong to, in the absence of an express limitation by the opponent, the repair of electronic machines and apparatus cannot be considered complementary to stoneworking machines or to be offered by the same undertakings.

 

Hence, the contested goods are dissimilar to the opponent’s goods and services.

 

Contested services in Class 37

 

However, when comparing the opponent’s installation, maintenance and repair of electronic machines and apparatus, and providing information relating thereto with the contested construction, maintenance and repair of stoneworking machines as well as installation thereof, it can be deduced from the literal meaning of the word repair, present in both specifications, that they have the same nature in that they are both repair services and that their purpose is the same in the broadest sense of the word, i.e. that they ‘mend something broken’. However, in the absence of an express limitation by the opponent as to the type of electronic machines concerned which would remedy the vagueness of this term, it cannot be assumed that they are provided by the same companies, that their methods of use coincide, that they share the same distribution channels or that they are in competition or complementary. Therefore, the competing services are at most similar to a low degree.

 

 

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 services found to be similar to a low degree are directed at professionals working in the stoneworking industry. The degree of attention is above average, considering that specific technical know how is required to render these services and therefore the decision to contract this service to a particular service provider will be done after some consideration.

 

 

3. The signs

 

 

 

Earlier trade mark	Contested sign

 

 

The relevant territory is the European Union.

 

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. Since the competing marks have English verbal elements, in the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

 

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).

 

Conceptually, the marks’ common word NTT has no meaning in English and is therefore distinctive. However, the marks’ second verbal elements are meaningful for the English speaking part of the public. The word DATA in the earlier mark will perceived as ‘facts and statistics collected together for reference or analysis’ or more specifically ‘the quantities, characters, or symbols on which operations are performed by a computer, being stored and transmitted in the form of electrical signals and recorded on magnetic, optical, or mechanical recording media’. The word CORESAW in the contested sign is a combination of the English words CORE and SAW. Although the word CORE can have different meanings, in combination with the word SAW it will most likely be perceived as a tool that cuts cylindrical samples of rock, ice, or other material obtained by boring with a hollow drill.

 

Both these elements are non-distinctive in relation to the goods and services covered by the marks. The word DATA will be perceived as a reference to the information needed to render the relevant earlier services and the word CORESAW will be perceived as indicating the type of machine being the object of the applicant’s services. Therefore, in spite of their different meanings they have very little impact on the overall perception of the signs and do not really serve to distinguish them conceptually. Hence the conceptual aspect does not influence the assessment of the similarity of the signs.

 

Visually, both marks contain the word NTT in first position. They differ in their second verbal elements DATA and CORESAW and the colours and minor stylisation of their verbal elements. However, taking into account that these verbal elements are non-distinctive and that it is common in trade to decorate marks by means of colour and typeface, these differences have very little impact and cannot offset the overall high degree of similarity between the signs.

 

Aurally, the common verbal element NTT can only be pronounced letter by letter and therefore the pronunciation of the signs coincides in the syllables ‛N-T-T’ present identically in both signs. The pronunciation differs in the pronunciation of the two syllable word ‘DA-TA’ in the earlier mark and two syllable word ‘CORE-SAW’ in the contested sign. However, considering their clear reference to the goods and services in question, these elements are not likely to be referred to or if they are, they have little impact. Therefore, also considering that consumers in general pay more attention to the beginning of signs than to their endings, it must be concluded that the marks are aurally similar to a high degree.

 

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

 

 

4. Distinctiveness of the earlier mark

 

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

 

According to the opponent, the earlier trade mark has a reputation in the Benelux, Czech Republic, Denmark, Germany, Spain, France, Italy, Hungary, Austria, Poland, Slovakia and the United Kingdom.

 

Such claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C-251/95, ‘Sabel’), and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, ‘Canon’).

 

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed either the public at large or a more specialised public.

 

In the present case the contested trade mark was filed on 19/04/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the Benelux territory, Czech Republic, Denmark, Germany, Spain, France, Italy, Hungary, Austria, Poland, Slovakia and the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely all the goods and services for which the mark is registered. These are the same goods and services on which the ground of article 8(1)(b) EUTMR is based and are compared above under ‘Likelihood of confusion’ section b).

 

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

 

On 22/01/2016 the opponent filed the following evidence:

 

Exhibit 1: Extracts from Brands Finance Global 500 of March 2012 ranking NTT as the 14th most valuable global brand. As regards its type of business, it is mentioned that NTT recently released a line-up of 24 new phones including 9 Smartphone’s which signals the largest and most diverse line up of phones in NTT history.

 

Exhibit 2: Extracts from the website www.ntt-global.com of 09/07/2014. They mention that the NTT Group as one of the world’s largest ICT companies comprises a select group of global technology companies. Furthermore, the group generated a total revenue of 112 billion US dollars, employs 240,000 skilled professionals all over 250 data centres in 79 countries worldwide and works with over 10,000 clients and 80% of the Fortune Global 100 list.

 

Extracts from the website www.ntt.com of 09/07/2014 mentioning that NTT Communications is the long distance & international communications and ICT solution provider of NTT – the top ranked telecommunications company in the world (ranked 32nd in the Fortune Global 500 list of 2013). It also shows the below organogram mentioning NTTDATA as the company responsible for Application integration.

 

 

Furthermore it is mentioned that NTT Communications group has subsidiaries and offices in 120 cities in 42 countries/regions, connecting networks to 196 countries/regions around the world.

 

Exhibit 3: Undated brochure of the NTT Group containing an overview of the group of companies. It mentions that the NTT Group has total revenues of 130bn US dollars and is ranked globally as number 1 in revenues for any telecommunications company. It also has a direct presence in 72 countries and provides network coverage in around 160 countries worldwide.

 

Exhibit 4: Extracts from the NTT DATA’s (the opponent’s) 2013 annual report. It reports that the NTT DATA group posted net sales of 1,301.9 billion yen and operating income of 85.6 billion yen. The report further shows that the company is active in the fields of managed network services in Class 38 and system integration, cloud computing, IT consulting, application services, data centre services and managed IT services in Class 42.

 

Exhibit 5: Extracts from the 2011 and 2012 annual reports of NTT DATA with similar information including the following overview of its worldwide bases.

 

Exhibit 6: Extract from Bloomberg BusinessWeek of 21/10/2012 containing an interview with the president and CEO of opponent titled: ‘IT Giant rolls out global plans for growth’ and mentioning that it wants to build a global brand.

 

Exhibit 7: Extract from Bloomberg BusinessWeek dated November-December 2012 containing an article in the advertisement section of the magazine titled: ‘NTT DATA makes the case for the cloud’.

 

Exhibits 8-13: Advertisements in famous business newspapers and magazines such as the Financial Times, the Wall Street Journal, the Economist, TIME magazine, Fortune published in 2012 and 2013.

 

Exhibits 14-15: Brochure and photo of the British Open golf tournament 2013 showing advertisement sponsored by the opponent.

 

Exhibit 16: Extract from www.eu.ntt.com listing the various industry awards won by NTT Europe concerning the years 2008-2013 in the field of communications.

 

Exhibit 17: Extract from http://top100innovators.com mentioning NTT in the list of ‘Top100 Global Innovators companies’ of 2011, 2012 and 2013 created by Thomson Reuters.

 

Exhibit 18: Brochure from NTT DATA about automotive IT.

 

Exhibit 19: Undated brochure from NTT DATA titled ‘manufacturing consulting’. It mentions inter alia: today, industrial machines, cars, healthcare equipment, household appliances, airplanes and even smartphones can all host embbed system: programmable electronic device design for a particular function and which often work in real/time.

 

Exhibit 20: Undated brochure from NTT DATA about a product called ‘viewroad’ which forecasts traffic jams.

 

Exhibit 21: Print out from www.ntt.co.jp and www.nttdocomo.co.jp about the attendance of NTT and NTTDOCOMO to the ITU Telecom world 2011 in Geneva.

 

Exhibit 22: Print out from www.bloomberg.co.jp about NTT and NTT DOCOMO’s participation in ITU Telecom world 2009 in Geneva. Print out from ntt-telectronics.com and ntt-at.com about its participation in the ECOC Conference in 2011 in Geneva showing a product used in the maintenance and servicing of computer equipment.

 

Exhibit 23: Order acknowledgements between the opponent and customers in Europe of telecom products as well as copies of various business cards of Senior Executives of the opponent based in Europe.

 

Exhibit 24: Information about the NTT Global Forum held in Frankfurt, Germany in 2012.

 

Exhibit 25: Copy of a delivery slip for specific bespoke IT goods and various invoices and purchase orders between the opponent and Honda Racing Development UK.

 

On the basis of this evidence it must be concluded that the term NTT enjoys some degree of reputation in the EU among professionals active in industries that heavily rely on IT systems such as the automotive industry. It is clear that the Japanese ICT company NTT is a global market player since it is listed as one of the world’s most valuable and innovative brands by independent sources such as Thomson Reuter and Brands Finance Global 500 (see exhibits 1 and 17) and has won various industry awards in the field of communications in Europe (exhibit 16). Although the evidence from third parties provides little information as regards the field and territory of use, NTT DATA’s (the opponent’s) annual reports and websites provide detailed information about its activities in the ICT field, its presence in Europe and its turnover figures. Moreover, the company’s promotional efforts by means of sponsoring prestigious sports events (exhibits 14 and 15)  and advertisement in the famous business press (exhibits 7-13) contribute to the finding that NTT is investing a lot in creating and maintaining the image of being a mayor global ICT company.

 

The applicant argues that the evidence does not provide any evidence of the possible reputation of the NTT DATA as a trademark but only refers to the company NTT DATA. This argument must be dismissed since it is clear from the evidence as a whole and in particular the press articles and advertisements that the term NTT DATA is not only used as a company name but also as an indicator of origin of certain services.

 

Also the fact that some pieces of evidence (exhibits 1 and 17) refer to the NTT group instead of the opponent, i.e. NTT DATA, does not lead to a rejection of the reputation. The Court has held that acquisition of distinctive character may be as a result both of the use as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In such cases it is sufficient that, in consequence of such use, the relevant consumers actually perceive the goods or services designated by that mark as originating from a given undertaking (07/07/2005, C-353/03, Have a break, EU:C:2005:432, § 25-30). Moreover, the word DATA is non-distinctive just like the other descriptive terms used in the names of the other group entities such as NTT Communications or NTT Europe and therefore does not alter its distinctive character.

 

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed, but only in relation to:

 

Classes 38 and 42: Managed network services, system integration, cloud computing, IT consulting, application services, data centre services and managed IT services.

 

Although these specifications are not mentioned in the list of services for which the opponent claims reputation, they can be considered to correspond to the following services for which the opponent has claimed reputation, namely

 

Class 38: Providing access to communication networks using the Internet or cellular telephones and other communication means, and providing information relating thereto; Consulting services relating to the provision of access to communication networks using the Internet or cellular telephones and other communication means; Communication by computers terminal and other communication machines and apparatus, and providing information relating thereto.

 

Class 42: Computer software design, computer programming, or maintenance of computer software; Consultancy, instruction and providing information relating to computer software design, computer programming, or maintenance of computer software; Computer system design, creating or maintenance of computer systems; Consultation, instruction and providing information relating to computer system design, creating or maintaining of computer systems; Providing technical information relating to computer software design, computer programming, or maintenance of computer software using the Internet, mobile telephone communication or other communication means; Cloud computing; Computer system integration services; Consulting services in the field of cloud computing; Application service provider (ASP), namely, providing, hosting, managing, developing, and maintaining applications, software, web sites and databases, and software as a service (SaaS) services; Research and development of computer technologies; Enterprise resource planning implementation services, including the definition, acquisition and implementation of management information systems.

 

Even though it seems likely that a big ICT group of companies also provides some of the other goods and services for which reputation is invoked, this cannot be concluded on the basis of the evidence submitted. It is mainly the annual reports that give some idea of the opponent’s field of business; the other independent evidence remains rather vague referring to NTT as an ICT or telecommunications company. Although there is some evidence showing use in relation to IT goods, these goods are either not offered under the brand NTT or merely show use; not recognition of the brand NTT.

 

Consequently, for the goods and services claimed to be reputed but not listed above the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering that the earlier trade mark as a whole has no meaning for any of these goods and services from the perspective of the public in the relevant territory, 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.

 

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

 

 

5. Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

 

As has been concluded above, only the contested services have been found similar to a low degree to the installation, maintenance and repair of electronic machines and apparatus, and providing information relating thereto of the earlier mark which in relation to these services is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested services are directed at a public whose level of attention is above average. The marks in dispute have been found to be visually and aurally highly similar, while the signs do not convey any clearly differentiating concepts that will aid the relevant consumers in distinguishing between them.

 

Indeed, the only meaningful elements, i.e. the signs’ second verbal elements DATA and CORESAW, will not have much of an impact on the overall perception of the signs, since they will be perceived as purely descriptive and not as an indicator of origin or as elements that could distinguish the signs conceptually. Hence, that difference can certainly not counteract the visual and aural similarity. Therefore, the public will rather notice that the marks coincide in their first and only distinctive element NTT.

 

The applicant argues that the level of distinctiveness of the element NTT is very low because there are several registered trademarks in the EUIPO trademark register beginning with the abbreviation NTT namely No. 1 343 748 (NTT GLOBALFEED), No. 6 595 706 (NTT), No. 12 186 615 (NTT Com Security), No. 12 203 121 (NTT docomo) and No. 12 295 853 (NTT Group). However, the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include NTT. Under these circumstances, the applicant’s claims must be set aside.

 

In the light of the foregoing, and having regard to the principle of interdependence – according to which a higher degree of similarity between the conflicting signs counteracts a lower degree of similarity between the services and vice versa –, the degree of similarity between the marks at issue is sufficient for it to be considered that even more attentive English-speaking consumers could believe that the lowly similar services in question come from the same undertaking or, as the case may be, economically linked undertakings.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

 

It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low degree to those of the earlier trade mark.

 

However, the opposition is not successful insofar as the dissimilar goods are concerned since similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR.

 

 

REPUTATION – ARTICLE 8(5) EUTMR

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 

• The signs must be either identical or similar.

 

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

 

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

 

 

1. The signs

 

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

 

 

2. Reputation of the earlier trade mark

 

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

 

 

3. The ‘link’ between the signs

 

As seen above, the signs are similar and the earlier mark is assumed to be highly reputed. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

 

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

 

∙        the degree of similarity between the signs;

 

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 

∙        the strength of the earlier mark’s reputation;

 

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 

∙        the existence of likelihood of confusion on the part of the public.

 

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

 

However, the Court has made it clear that the mere fact that the marks in question are similar is not sufficient for it to be concluded that there is a link between them. Rather, whether or not there is a link between the marks at issue must be appreciated globally, taking into account all factors relevant to the circumstances of the case (27/11/2008, C 252/07, Intel, EU:C:2008:655, § 42).

 

In terms of the nature of the goods and services, it has been established that the opponent’s reputed services and the applicant’s stoneworking machines in Class 7 are very distinct, the former relating to the telecom and IT sector (Classes 38 and 42) and the latter to the construction field. They do not coincide in the main relevant factors relating to these goods and services either. The applicant’s goods are intended to cut stones whereas the opponent’s reputed services are intended to collect, transfer, store, or process data. As a consequence, they are offered by different companies. The contested services are typically offered by ICT companies, whereas the contested stoneworking machines are offered by manufacturers of construction products for sawing, drilling, grinding, polishing and demolishing concrete, steel and other hard materials. Moreover, they are not in competition or complementary and they differ in their pertinent distribution channels. Also the opponent has not proven that the applicant’s goods contain embedded software or work via an operating system. The evidence submitted merely shows that the opponent produces software for the automotive industry. However, no reputation was proven for such goods and they are far more complex and intelligent than the contested basic mechanical power tools.

 

In other words, the opponent’s reputed services have nothing in common with the contested stoneworking machines. Further taking into account that the earlier mark is not highly reputed in the sense that it is known by the public at large but merely among professionals active in industries that heavily rely on IT systems, these competing goods and services belong to such different fields of trade that, in the absence of any direct link to construction machines, the contested sign is unlikely to bring the earlier mark to the mind of the public it targets (see in this regard also decisions of 11/04/2016, R 1345/2015-2, NTT GROUP (fig.) / NTT and 08/04/16, R 964/2015-2 – NTT GROUP / NTT).

 

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

 

 

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 shall 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

 

 

Christian RUUD

Adriana VAN ROODEN

Frédérique SULPICE

 

 

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.