OPPOSITION No B 2 278 813
Sarl Aston France, 151, avenue Gallieni, 93177 Bagnolet Cedex, France (opponent), represented by Ipsilon, Le Centralis, 63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative)
a g a i n s t
Simba Technologies Incorporated, 938 West 8th Avenue, Vancouver British Columbia V5Z 1E5, Canadá (applicant), represented by Vossius & Partner Patentanwälte Rechtsanwälte Mbb, Siebertstr. 3, 81675 München, Germany (professional representative).
On 18/01/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 278 813 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 995 371 . The opposition is based on European Union trade mark registration No 1 905 223 ‘SIMBA’. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods on which the opposition is based are the following:
Class 9: Apparatus for reception of television by satellite, cable or radio wave; hi-fi apparatus, video cassettes, apparatus for recording, transmission or reproduction of sound or images, aerials, dish aerials, videorecorders, audio-receivers and video-receivers, television apparatus.
The contested goods and services are the following:
Class 9: Computer software, in particular computer software programs for data access, data connectivity and analytics from computer software databases, computer software which permits software developers to create computer program modules which facilitate the connection of front-end application software to local and remote database management systems, computer software which acts as middleware that allows front-end application software to perform analytics on local and remote database management systems, computer software which acts as middleware that allows disparate software systems to communicate among one another, computer software which acts as middleware that allows application software to communicate with software systems containing structured and unstructured data sources to perform analytics, the aforementioned goods with the exception of computer software intended or necessary for apparatus for capturing images from video sources in relation to the operation of cameras.
Class 41: Training services, namely methodology and computer-based knowledge and training systems in the field of computer programming and computer operations for data access, data connectivity and analytics.
Class 42: Computer and information technology services, namely maintenance, support, installation and configuration of computers, computer software and information technology systems, the aforementioned services not in relation to computer software intended or necessary for apparatus for capturing images from video sources in relation to the operation of cameras.; computer consultation relating to methodology and computer-based knowledge systems in the field of computer programming and computer operation for data access, data connectivity and analytics.
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 ‘in particular’, 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 (see the judgment of 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 with a broader category, is exclusive and restricts the scope of protection only to the specifically listed [goods and services.
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 goods are computer software, in particular computer software programs for data access, data connectivity and analytics from computer software databases, computer software which permits software developers to create computer program modules which facilitate the connection of front-end application software to local and remote database management systems, computer software which acts as middleware that allows front-end application software to perform analytics on local and remote database management systems, computer software which acts as middleware that allows disparate software systems to communicate among one another, computer software which acts as middleware that allows application software to communicate with software systems containing structured and unstructured data sources to perform analytics, the aforementioned goods with the exception of computer software intended or necessary for apparatus for capturing images from video sources in relation to the operation of cameras. These goods are very specific software products. The opponent’s goods are various types of apparatus for recording, transmitting and reproduction of sounds and images and their peripherals. The goods have different nature, purpose and methods of use. They are not complementary nor in competition. The goods do not coincide in manufacturers nor users. The goods are dissimilar.
Contested services in Class 41
The contested training services, namely methodology and computer-based knowledge and training systems in the field of computer programming and computer operations for data access, data connectivity and analytics have no points in common with the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. They have different origins, distribution channels and consumers. They are not complementary, nor in competition. These services are dissimilar to the opponent’s goods.
Contested services in Class 42
The contested computer and information technology services, namely maintenance, support, installation and configuration of computers, computer software and information technology systems, the aforementioned services not in relation to computer software intended or necessary for apparatus for capturing images from video sources in relation to the operation of cameras.; computer consultation relating to methodology and computer-based knowledge systems in the field of computer programming and computer operation for data access, data connectivity and analytics are services of maintenance, support, installation and configuration of computers, computer software and information technology systems and their respective consultancy. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. They have different origins, distribution channels and consumers. They are not complementary, nor in competition. These services are dissimilar to the opponent’s goods.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition 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.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
|
Chantal VAN RIEL |
Erkki MÜNTER |
Begoña URIARTE VALIENTE |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.