OPPOSITION No B 2 665 092

JetBrains s.r.o., Na hřebenech II 1718/10, 14700 Praha 4, Nusle, Czech Republic (opponent), represented by Rott, Růzička & Guttmann Patentová, Známková a Advokátní Kancelář, Vinohradská 37/938, 120 00 Praha 2, Czech Republic (professional representative)

a g a i n s t

Jiran Co., Ltd., Shinsa S&G Building 5F, 542, Yeoksam-ro (Daechi-dong), Gangnam-gu, Seoul  06187, Republic of Korea (LA) (applicant), represented by Dr. Weitzel & Partner Patent- und Rechtsanwälte mbB, Friedenstr. 10, 89522 Heidenheim, Germany (professional representative).

On 25/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 665 092 is upheld for all the contested goods.

2.        European Union trade mark application No 14 798 318 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 798 318. The opposition is based on Czech trade mark registration No 333 337. 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

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

Class 9:        Software.

The contested goods are the following:

Class 9:        Downloadable computer programs; computer programs for document management; programs for operating system; computer application software for mobile phone, computer for game, computer software, computer program for preventing disclosure of personal information; computer software for encryption; laptop computer; computer; web server; database server; computer server; software for managing web server; software for managing database server; software for managing computer server; computer server for storage of electronic data; computer program for file sharing using storage connected via internet; computer program for communicating using storage connected via internet.

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.

The contested downloadable computer programs; computer programs for document management; programs for operating system; computer application software for mobile phone, computer software, computer program for preventing disclosure of personal information; computer software for encryption; software for managing web server; software for managing database server; software for managing computer server; computer program for file sharing using storage connected via internet; computer program for communicating using storage connected via internet are included in the broad category of the opponent’s software. Therefore, they are identical.

The contested database server is a computer system that provides database services to other computer programs or computers, as defined by the client–server model. The contested computer server; computer server for storage of electronic data are computer systems that provide functionality for other programs or devices, called ‘clients’. The contested web server is a computer system that processes requests via HTTP, the basic network protocol used to distribute information on the World Wide Web. These good are similar to the opponent’s software as they may coincide in producers, end users and distribution channels. Moreover, they are complementary.

The contested computer for game, laptop computer; computer are similar to the opponent’s software. Indeed, a computer is actually a ‘system’, a combination of components that work together. The hardware devices are the physical components of that system. The hardware is designed to work hand in hand with computer programs, referred to as software. Computer hardware companies also manufacture software, share the same distribution channels and target the same professional public (e.g. for use in banking and finance, education, medicine, business and entertainment/recreation) and/or the general public. Moreover, they are complementary.

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 found to be identical or similar are directed at the public at large and/or at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high according to the degree of specialisation and the costs of the relevant goods. For example, the level of attention will be high for a database server, because they are usually highly specialised and relatively expensive, whereas a computer for game may be in some cases more widely consumed and relatively cheaper. In such a case, the level of attention will be only average.

3. The signs

TEAMCITY	TEAMITY
Earlier trade mark	Contested sign

The relevant territory is Czech Republic.

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 signs are word marks which have no element that could be considered clearly more distinctive or more dominant (visually eye-catching).

Visually, the signs coincide in the letters ‘TEAM*ITY’ in the same order which form the totality of the contested sign and seven out of the eight letters of the earlier mark. However, the signs differ in the fifth letter ‘C’ of the earlier mark.

The first parts of the conflicting marks, namely the sequence of letters ‘TEAM’, are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘T−E−A−M−*−I−T−Y’, present identically in both signs. The pronunciation differs in the sound of the fifth letter ‘C’ of the earlier mark, which has no counterpart in the contested sign.

Therefore, although the absence of the letter ‘C’ in the contested sign slightly modifies the syllabic structure, the signs are aurally highly similar.

Conceptually, for part of the relevant public, neither of the signs has a meaning. In such a case, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Another part of the relevant public, such as IT professionals, is familiar with English in connection with the goods in question. Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Lloyd Schuhfabrik Meyer, paragraph 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (06/10/2004, T 356/02, Vitakraft, EU:T:2004:292, § 51). Therefore, they will perceive the components in the earlier mark corresponding to the English words ‘TEAM’ and ‘CITY’ meaning ‘a group of people linked in a common purpose’ and ‘an urban settlement with generally a large population’, respectively. The contested sign is an invented term which will not be associated with any meaning for a large part of the relevant public. While part of the public will give meanings to the earlier mark, since the contested sign will not be associated with any meaning, the signs are not conceptually similar.

However, it cannot be excluded that a more reduced part of the relevant public will perceive the English word ‘TEAM’ in the contested sign and in the earlier mark. For them, as the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree.

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 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

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

The goods are partly identical and partly similar. They are directed at the public at large and/or at business customers whose degree of attention may vary from average to high.

Seven out of the eight letters of the earlier mark form in the same order the whole contested sign. Moreover, the additional letter of the earlier mark is placed in the middle of the sign which is a part that visually does not catch the attention of consumers so much. For part of the relevant public, the conceptual aspect does not influence the assessment of the similarity of the signs. For another part, the signs are not conceptually similar and for the rest, they are conceptually similar.

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).

Even taking into account a higher degree of attention of some consumers for some goods, the coincidences between the signs far outweigh the differences. Even for the consumers for who the signs are not conceptually similar, the visual and aural similarities are so important that it is likely that they will confuse the marks. Moreover, the risk is still higher for those for whom there is no conceptual difference between the signs, especially those who will associate both signs with a same concept, namely the meaning of ‘team’.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Czech trade mark registration No 333 337. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Chantal VAN RIEL

Benoit VLEMINCQ

Martina GALLE

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.