OPPOSITION No B 2 770 058

Conlance GmbH, Werner-von-Siemens-Straße 6, 86159 Augsburg, Germany (opponent), represented by Rau & Rau, Widenmayerstr. 28, 80538 Munich, Germany (professional representative)

a g a i n s t

Skillandia, s.r.o., Holečkova 103/31, 15000  Praha 5 – Smíchov, Czech Republic (applicant), represented by Inventa  Patentová a Známková Kancelária S.R.O. , Palisády 50, 811 06 Bratislava 1, Slovakia (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 770 058 is partially upheld, namely for the following contested goods and services:

Class 9: Computers; Recorded computer programs; Recorded computer software; Computer programs [downloadable software]; Computer software applications, downloadable; Peripherals adapted for use with computers.

Class 38: Communications via analogue and digital computer terminals; Electronic mail; Providing internet chatrooms; Videoconferencing; Providing online forums; Transmission of digital files.

Class 41: Correspondence courses; Training.

Class 42: Computer programming; Computer software design; Design, maintenance, development and updating of computer software; Software as a service [SaaS]; Electronic data storage.

2.        European Union trade mark application No 15 273 691 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 some of the goods and services of European Union trade mark application No 15 273 691, namely against all the goods and services in Classes 9, 38 and 42 and some of the services in Classes 35 and 41. The opposition is based on international trade mark registration No 1 215 101 designating the European Union. 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.

1. The goods and services

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

Class 9: Magnetic data carriers; CDs, DVDs and other digital recording media; data processing equipment, computers; computer software.

Class 38: Telecommunications, especially by providing access to platforms and portals on the Internet.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; hosting of web pages in the Internet for third parties.

The contested goods and services are the following:

Class 9: Computers; Recorded computer programs; Recorded computer software; Computer programs [downloadable software]; Computer software applications, downloadable; Peripherals adapted for use with computers.

Class 35: Compilation of information into computer databases; Collating of data in computer databases; Data search in computer files for others; Rental of advertising space on the internet; On-line advertising on a computer network; Updating and maintenance of data in computer databases.

Class 38: Communications via analogue and digital computer terminals; Electronic mail; Providing internet chatrooms; Videoconferencing; Providing online forums; Transmission of digital files.

Class 41: Correspondence courses; Training.

Class 42: Computer programming; Computer software design; Design, maintenance, development and updating of computer software; Software as a service [SaaS]; Electronic data storage.

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

Computers are identically contained in both lists of goods.

Recorded computer programs; recorded computer software; computer programs [downloadable software]; computer software applications, downloadable are included in the broad category of the earlier mark computer software. Therefore the goods are identical.

Peripherals adapted for use with computers are similar to the opponent’s computers as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

Contested services in Class 35

The contested services in Class 35 are provided by advertising agencies or companies specialising in office functions. Services linked to advertising provide others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity, and are commonly provided by companies specialised in providing advertising and marketing services for third parties. Data collation, search and database maintenance services concern office functions aiming at performing day-to-day operations that are required by a business to achieve its commercial purpose. These services are also usually provided by specialised undertakings to third parties.

These services have nothing in common with the services of the opponent in Classes 9, 38 and 42. Even if database management or advertising services use computers or telecommunication services, this link is too remote to lead to a finding of similarity as the usual commercial origin of the goods and services is different. They also differ in purpose, are neither complementary nor in competition. The goods and services are therefore dissimilar.

Contested services in Class 38

Communications via analogue and digital computer terminals; electronic mail; providing internet chatrooms; videoconferencing; providing online forums; transmission of digital files are all included in the broad category of the opponent’s telecommunications, especially by providing access to platforms and portals on the Internet.

The term ‘especially’ used in the opponent’s list of services indicates that the specific 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).

Therefore, the services are identical.

Contested services in Class 41

The contested correspondence courses; training are similar to the opponent’s scientific research services, as they have the same purpose of acquiring and/or imparting or disseminating knowledge or skills. They can coincide in provider (e.g. universities) and distribution channels.

Contested services in Class 42

Computer programming; computer software design; design, maintenance, development and updating of computer software are all included in the broad category of the opponent’s design and development of computer hardware and software. Therefore the services are identical.

Software as a service [SaaS] is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. These services are provided by the same undertakings and distributed through the same channels as the opponent’s design and development of computer hardware and software. They target the same public and can be complementary, or in competition. The services are therefore highly similar.

Electronic data storage is also included in or overlap with the broad category of the opponent’s hosting of web pages in the Internet for third parties, as webpage hosting can also include the hosting of electronic data. Therefore the services are identical.

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 directed at the public at large as well as at business customers with specific professional knowledge or expertise, especially as far as computer programming services are concerned.

The degree of attention will vary from average to high, depending on the level of expertise of the relevant public.

3. The signs

skillstaff
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘SKILL’ is not meaningful in certain territories, for example, in those countries where English is not understood, and where its distinctiveness is thus normal. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

According to the applicant the word ‘SKILL’ is non-distinctive in the context of the goods and services at hand. However, as explained above, this will not be the case in the parts of the relevant territory where English is not understood. The applicant also submitted a list of hundred European Union trade mark registrations containing the term ‘SKILL’ in relation to goods included in Class 9, 16, 35, 38, 41 and 42. This evidence, however, only provides an overview of European Union marks on the register, but gives no indication as regards the use of these marks on the market. The mere existence of several marks containing the word ‘SKILL’ does not prove that consumers would be confronted with this term to such an extent that the normal distinctive character of this word would be affected.  

The earlier sign is a word mark ‘skillstaff’. The contested sign is a figurative mark consisting of the word ‘SKILLCRAFT’ written in white capital letters placed within a black square. The part ‘CRAFT’ is written in a bolder font than ‘SKILL’.

Visually, the signs coincide in ‘SKILL’ and ‘AF’, which are in the same position in both signs and they differ in the letters ‘ST’ and ‘F’ of the earlier sign and ‘CR’ and ‘T’ of the contested sign. The signs have the same length. The differences in typeface, colour, and background are non-distinctive decorative features of the contested sign.

It should also be noted that the signs coincide in their first part, ‘SKILL’, which is even visually separated in the contested sign, being written in a finer font than the rest of the sign. This is important since the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (judgments of 15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SKILL’*’AF’ which appear in the same sequence in both signs. The differences in the sounds of the sixth and seventh letters ‘ST’/’CR’ or the contested sign’s final letter ‘T’ concern the middle or end of the signs, where they have less impact on consumers than the coincidence in their beginning.

Therefore, the signs are aurally similar to an average degree.

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.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The signs coincide in their initial five letters and their eighth and ninth letters are also the same. The mere difference in two letters in the middle or one letter in the end of the signs, or the basic stylisation of the contested sign is insufficient to counteract the similarities, particularly given that the coinciding initial element will attract consumers’ attention first.

The public at large, but even the more attentive professional public will thus readily assume that the goods and services come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international 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 goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

 

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

Cynthia DEN DEKKER

Marianna KONDAS

Julie GOUTARD

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.