RABBIT | Decision 2317447 – Digi International Inc. v. DMG Media Limited

OPPOSITION DIVISION

OPPOSITION No B 2 317 447

Digi International Inc., 11001 Bren Road East, Minnetonka, Minnesota 55343,

United States of America (opponent), represented by V.O., Carnegieplein 5, 2517 KJ

The Hague, The Netherlands (professional representative)

a g a i n s t

DMG Media Limited, Northcliffe House 2 Derry Street, London W8 5TT, United

Kingdom (applicant), represented by Haseltine Lake LLP, Redcliff Quay 120 Redcliff

Street, Bristol BS1 6HU, United Kingdom (professional representative).

On 23/11/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 317 447 is partially upheld, namely for the following

contested goods and services:

Class 9: Computer software; software to enable display and distribution of

electronic media, data, information and/or images over the internet,

by way of mobile communications devices, on television and/or by

other means of electronic communication, including uploading,

posting, transmitting, sharing, chatting and/or blogging;

downloadable ring tones; downloadable electronic publications;

apparatus for recording, transmission or reproduction of sound or

images; magnetic data carriers.

Class 38: Telecommunications; providing chat rooms for transmission of

messages, images and information on a website, on a television

channel, or other electric/electronic device; television based social

networking services, namely the provision of interactive television

channels for social networking; broadcasting services; interactive

television services, namely services enabling viewers to organise

and conduct meetings, gatherings, discussions and debates

through an interactive television channel; interactive television

broadcasting; interactive communications services by means of

computer; providing internet chat-rooms; providing chat-rooms on a

television channel; electronic bulletin board services; providing

telecommunications channels for teleshopping services;

teleconferencing services; computer aided transmission of

messages and images; data transmission and instant messaging

services; provision of information relating to all of the aforesaid

services.

Class 41: Entertainment, television entertainment, games, competitions,

quizzes, provision of information relating to on-screen

entertainment and/or publications (non-downloadable), publication

of text and information; publication of messages and social

networking information; publication of travel guides, booking

services for entertainment, educational, sporting or cultural

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activities; providing information and booking services relating to

fitness; non-downloadable publications, music and games provided

over the internet; entertainment services; provision of educational,

activities; education and entertainment; organisation of games and

competitions; television entertainment, radio entertainment,

production and distribution of television programmes; television and

radio production, recording, syndication and distribution services;

cine, video and recorded sound production services; publishing,

book club services, providing information relating to books and

educational matters; providing information in relation to all of the

aforesaid services.

Class 42: Computer services; hosting computer websites; web hosting

services; web platform services; hosting web facilities for

organising and conducting online meetings, gatherings, discussions

and debates; provision of facilities for preparing personalised web

pages featuring user-defined information; creating and maintaining

web-sites for others; provision of information relating to all of the

aforesaid services.

Class 45: Introduction and social networking services; provision of dating

services; provision of social networking websites; provision of

information relating to all of the aforesaid services.

2. European Union trade mark application No 12 058 004 is rejected for all the

above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

Preliminary remarks

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European

Union trade mark application No 12 058 004 for the word mark ‘RABBIT’. The

opposition is based on inter alia, European Union trade mark registrations No

2 793 024 for the word mark ‘RABBIT’ and No 4 997 243 for the word mark

‘RABBITCORE’. The opponent invoked Article 8(1)(a) and (b) in relation to the earlier

European Union trade mark registration No 2 793 024 and Article 8(1)(b) in relation to

the remaining earlier rights.

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PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of

filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so

requests, the opponent must furnish proof that, during the five-year period preceding

the date of publication of the contested trade mark, the earlier trade mark has been

put to genuine use in the territories in which it is protected in connection with the

goods or services for which it is registered and which the opponent cites as

justification for its opposition, or that there are proper reasons for non-use. The

earlier mark is subject to the use obligation if, at that date, it has been registered for

at least five years.

The same provision states that, in the absence of such proof, the opposition will be

rejected.

The applicant requested that the opponent submit proof of use of all its earlier marks

on which it based its opposition, inter alia, of the European Union trade mark

registrations No 2 793 024 for the word mark ‘RABBIT’ and No 4 997 243 for the

word mark ‘RABBITCORE’.

The contested application was published on 26/11/2013. The opponent was therefore

required to prove that the above mentioned earlier trade marks on which the

opposition is based were put to genuine use in the European Union from 26/11/2008

to 25/11/2013 inclusive.

The request was submitted in due time and is admissible as the earlier trade marks

were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and

services on which the opposition is based, namely the following:

European Union trade mark registration No 2 793 024 for the word mark ‘RABBIT’

Class 9: Computer software; computer hardware; microprocessors; user and

instruction manuals in electronic format relating to computer hardware, computer

software and microprocessors.

European Union trade mark registration No 4 997 243 for the word mark

‘RABBITCORE’.

Class 9: Computer hardware, including microprocessor modules with

embedded software.

Class 37: Maintenance and/or repair of computer hardware and peripheral

equipment; maintenance and/or repair of and technical support in the

field of computer network connectivity hardware.

Class 42: Design and development of computer hardware and software;

consulting and design services for or in connection with computer

network connectivity hardware and software; maintenance, repair and

technical support in the field of network connectivity software.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the

request for proof of use), the evidence of use must consist of indications concerning

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the place, time, extent and nature of use of the opposing trade mark for the goods or

services in respect of which it is registered and on which the opposition is based.

On 06/06/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the

moment of filing the request for proof of use), the Office gave the opponent until

11/08/2016, subsequently extended until 11/10/2016 to submit evidence of use of the

earlier trade marks. On 10/10/2016, within the time limit, the opponent submitted

evidence of use.

The evidence to be taken into account is the following:

 Affidavit signed by Dave Sampsell, Vice President, General Counsel and

Corporate Secretary of Digi International Inc. It is accompanied by invoices and

printouts from the website www.digi.com.

 Enclosure 1: Copies of the decision of the Cancellation Division No 9588 C of

17/08/2015 and the decision of the Second Board of Appeal of 22/08/2016

which state that the opponent used its earlier marks in relation to some/all of

the goods in Class 9.



Enclosure 2: Numerous invoices showing the products bearing the earlier marks

‘RABBIT’ and ‘RABBITCORE’ with the relevant time frame and an explanation

regarding the composition of invoices – Enclosure 2a.



Enclosure 3: Advertisement material contained in the enclosed print screens from

the websites www.digi.com and www.rabbit.com showing the earlier marks in

question ‘RABBIT’ and ‘RABBITCORE’.



Enclosure 4: Copies of pages of instruction manuals (with copyright dating 2008-

2009, 2013) in relation to the opponent’s hardware and software products. The

earlier marks appear on this material.



Enclosure 5: Datasheets mentioning the earlier marks, in particular the relevant

‘RABBITCORE’ in relation to the opponent’s products such as processors and

processor modules, accompanied by software.



Enclosure 6 and 7: List of the opponent’s distributors within the EU.



Enclosure 8: Opponent’s explanation related to the use of its earlier marks in

relation to the software product under the trade mark ‘DYNAMIC C’, marketing

in the relevant market under the umbrella/house marks ‘RABBIT’ and

‘RABBITCORE’ and used in connection with the opponent’s hardware products

sold under its marks.



Enclosure 9: Affidavit signed by Steve Maurer, Senior Counsel confirming the

information included in the Enclosure 8. It also mentions that the opponent

offers technical support services under the trade mark ‘Rabbit’.

The affidavit mentions in the first position on the list of the evidence filed by the

opponent contains the following information:

1. Products sold by Digi International Inc. under the RABBIT mark in Europe are

shipped to customers across the European Union. Company records show that

between 1 200 and 1 500 RABBIT products are shipped each year to locations in

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Europe. Therefore, between 6 000 and 7 000 RABBIT products have been sold in

Europe during the relevant five-year period from 2009 to 2014.

2. Attached to the affidavit there are representative invoices issued to customers in

the UK, Spain, Italy, the Netherlands, Finland, Poland, Belgium and Germany, all

dated 2012, 2013 or 2014, along with printouts from the website www.digi.com

explaining the product codes shown on the invoices. The invoices identify RABBIT

products with either names, such as RabbitNet, or acronyms, such as RCM

(RabbitCore Module), Rabbit SBC (Rabbit Single Board Computers) or SR (Rabbit

Smart Star). In a few instances, only the series number is shown on the invoice, for

example ‘BL4S110’ or ‘BL2600’, which are series numbers for Rabbit Single Board

Computers.

In order to examine, in a given case, whether use of the earlier mark is genuine, an

overall assessment must be made taking account of all the relevant factors in the

particular case. That assessment implies certain interdependence between the

factors taken into account. Thus, a low volume of goods marketed under that trade

mark may be compensated for by high intensity of use or a certain constancy

regarding the time of use of that trade mark or vice versa (08/07/2004, T-334/01,

Hipoviton, §36).

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in

accordance with its essential function, which is to guarantee the identity of the origin

of the goods or services for which it is registered, in order to create or preserve an

outlet for those goods or services. Genuine use does not include token use for the

sole purpose of preserving the rights conferred by the mark. Furthermore, the

condition of genuine use of the mark requires that the mark, as protected in the

relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax,

EU:C:2003:145 and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

In the case at hand the earlier marks appear in the evidence in the form as they were

registered.

As far as the place of use is concerned the documents filed by the opponent, in

particular examples of invoices show that the place of use is the European Union. As

confirmed in the affidavit mentioned above, the invoices in question were issued to

customers in the UK, Spain, Italy, the Netherlands, Finland, Poland, Belgium and

Germany, most of them dated 2012, 2013. In this sense, the witness statement is

corroborated by supporting evidence. Therefore, the evidence relates to the relevant

territory.

Most of the evidence is dated within the relevant period.

In relation to the extent of use, it must be remembered that ‘use of the mark need not

always be quantitatively significant for it to be deemed genuine, as that depends on

the characteristics of the goods or services concerned on the corresponding market’

(11/03/2003, C-40/01, ‘Ansul’, §39). In the present proceedings, the mark was used

very regularly and with a broad territorial scope.

Having examined the material filed by the opponent the Opposition Division

considers that the party has submitted sufficient information as far as the items of

hardware are concerned, in particular, single board computers, microprocessors,

device servers, core modules. Furthermore, the Opposition Division notes that the

opponent sufficiently demonstrate that its products work only in connection with the

software that is accompanied by the product in question, in particular that the

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‘RABBIT DYNAMIC C’ CD-Roms related to installation software are sold in a kit

together with the Mini Core products as mentioned on the invoices. Finally, the

opponent also proved the use of the earlier marks for user and instruction manuals in

electronic format relating to computer hardware, computer software and

microprocessors by submitting downloadable manuals in relation to its products.

It follows that the opponent has proven genuine use for all the goods in Class 9,

namely, computer software; computer hardware; microprocessors; user and

instruction manuals in electronic format relating to computer hardware, computer

software and microprocessors in case of the earlier European Union trade mark

registration No 2 793 024 for the word mark ‘RABBIT’ and for computer hardware,

including microprocessor modules with embedded software in relation to the earlier

European Union trade mark registration No 4 997 243 for the word mark

‘RABBITCORE’.

As for the services in Classes 37 and 42, the fact that the manuals mention that

technical support services were offered is insufficient to meet requirements of

genuine use. The documents submitted do not contain concrete data which would

show actual use on the market of the earlier marks in the relevant territory in

connection with the services in Classes 37 and 42. With respect to most of these

services nothing is mentioned at all, whereas with respect to ‘technical support’

services there are no indications as to place or extent of use of the earlier marks in

the relevant Member States, apart from the fact that the indications of time are limited

to some references on print-outs of the opponent’s website’s ‘support forum’ and the

‘knowledge base’. More importantly, as to the nature of the use, although limited use

in relation to ‘technical support’ services has been shown, it has not been

demonstrated that this was done under the trade mark ‘RABBIT’. The opponent did

not provide any material that demonstrates a genuine commercial justification of the

use of its earlier marks in relation to these services for which its earlier mark was

registered. In other words, the opponent must show that its earlier mark is used in

relation to these services in the context of commercial activity with a view to an

economic advantage. The opponent did not provide any evidence that would show

that the economic aspect of the use of its trade marks in relation to the services

mentioned above was significant enough not to be concluded as merely token,

minimal or notional for the sole purpose of preserving the rights conferred by the

earlier marks.

As already mentioned above, it is not sufficient for genuine use of the mark to appear

probable or credible; actual proof of that use must be provided.

As a consequence, the Opposition Division concludes that the opponent did not

prove use of the earlier marks for any of the services in Classes 37 and 42.

Therefore, the Opposition Division will only consider the abovementioned goods in its

further examination of the opposition.

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

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goods and services, the distinctiveness of the earlier mark, the distinctive and

dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition

Division finds it appropriate to first examine the opposition in relation to the

opponent’s European Union trade mark registration No 2 793 024.

a) The goods and services

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

European Union trade mark registrations No 2 793 024

Class 9: Computer software; computer hardware; microprocessors; user and

instruction manuals in electronic format relating to computer hardware, computer

software and microprocessors.

The contested goods and services are the following:

Class 9: Computer software; software to enable display and distribution of

electronic media, data, information and/or images over the internet, by way of mobile

communications devices, on television and/or by other means of electronic

communication, including uploading, posting, transmitting, sharing, chatting and/or

blogging; downloadable ring tones; downloadable electronic publications; apparatus

for recording, transmission or reproduction of sound or images; magnetic data

carriers.

Class 35 : Publication of advertising texts and dissemination of advertising

matter; provision of advertising space; advertising and marketing information

distribution services; compilation of information into computer databases; data

search in computer files for others; rental of advertising time on communication

media; television advertising.

Class 38: Telecommunications; providing chat rooms for transmission of

messages, images and information on a website, on a television channel, or other

electric/electronic device; television based social networking services, namely the

provision of interactive television channels for social networking; broadcasting

services; interactive television services, namely services enabling viewers to

organise and conduct meetings, gatherings, discussions and debates through an

interactive television channel; interactive television broadcasting; interactive

communications services by means of computer; providing internet chat-rooms;

providing chat-rooms on a television channel; electronic bulletin board services;

providing telecommunications channels for teleshopping services; teleconferencing

services; computer aided transmission of messages and images; data transmission

and instant messaging services; provision of information relating to all of the

aforesaid services.

Class 41: Entertainment, television entertainment, games, competitions,

quizzes, provision of information relating to on-screen entertainment and/or

publications (non-downloadable), publication of text and information; publication of

messages and social networking information; publication of travel guides, booking

services for entertainment, educational, sporting or cultural activities; providing

information and booking services relating to fitness; non-downloadable publications,

Decision on Opposition No B 2 317 447 page: 8 of 13

music and games provided over the internet; entertainment services; amusement

parks; provision of educational, sport and cultural activities; education and

entertainment; organisation of games and competitions; television entertainment,

radio entertainment, production and distribution of television programmes; television

and radio production, recording, syndication and distribution services; cine, video

and recorded sound production services; publishing, book club services, providing

information relating to books and educational matters; providing information in

relation to all of the aforesaid services.

Class 42: Computer services; hosting computer websites; web hosting services;

web platform services; hosting web facilities for organising and conducting online

meetings, gatherings, discussions and debates; provision of facilities for preparing

personalised web pages featuring user-defined information; creating and maintaining

web-sites for others; provision of information relating to all of the aforesaid services.

Class 45: Introduction and social networking services; provision of dating

services; provision of social networking websites; provision of information relating to

all of the aforesaid services.

An interpretation of the wording of the list of goods and services is required to

determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates 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, it introduces a non-

exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services to show

the relationship of individual goods and services to 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 computer software is identically mentions in the opponent’s

specification.

The contested software to enable display and distribution of electronic media, data,

information and/or images over the internet, by way of mobile communications

devices, on television and/or by other means of electronic communication, including

uploading, posting, transmitting, sharing, chatting and/or blogging is included in or

overlaps with the opponent’s computer software. Therefore, these goods are

identical.

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The contested downloadable electronic publications; apparatus for recording,

transmission or reproduction of sound or images; downloadable ring tones; are

similar to the opponent’s computer software. These goods may coincide in the same

distribution channels, producers and the end user. Furthermore, they may be

complementary.

The remaining contested magnetic data carriers are similar to a low degree to the

opponent’s computer software. The goods in question may coincide in the same

producer and be complementary.

Contested services in Class 35

All the contested services are dissimilar to the opponent’s goods in Class 9. They are

all business related services that have no point in common with the opponent’s

goods. The goods and services are neither complementary nor are they in

competition. Their nature and purpose differ as does their method of use. They are

not directed at the same public nor are they normally produced/provided by the same

companies.

Contested services in Class 38

All the contested telecommunications; providing chat rooms for transmission of