ACUMEN | Decision 2361122 - NIIT Insurance Technologies Limited v. Adobe Systems Incorporated

Date Published: Sep 28, 2017

OPPOSITION No B 2 361 122

NIIT Insurance Technologies Limited, 2nd Floor, 47 Mark Lane, London EC3R 7QQ

United Kingdom (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Adobe Systems Incorporated, 345 Park Avenue, San Jose, California 95110, United States of America (applicant), represented by Stobbs, Endurance House, Vision Park,

Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 361 122 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 605 465 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 and services of European Union trade mark application No 12 605 465. The opposition is based on European Union trade mark registration No 10 358 299. The opponent invoked Article 8(1)(a) EUTMR.

PRELIMINARY REMARK

Regarding the grounds of the opposition invoked, the opponent did not include Article 8(1)(b) EUTMR in the ‘Notice of Opposition’ form.

Although, the specific conditions under Articles 8(1)(a) and 8(1)(b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) is claimed but identity between the signs and/or the goods/services cannot be established, as in the present case, when all the goods/services are not identical, the Office will still examine the case under 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 opposition was based on all the goods and services of the opponent’s European Union trade mark application No 10 358 299, namely Classes 9, 16, and 42.

On 01/10/2015, the Cancellation Division partially upheld the request for a declaration of invalidity, namely for services in Class 42 - Computer engineering; maintenance, rental and updating of computer software and programmes; scientific and industrial research; computer system analysis and recovery of computer data. The decision was appealed but the appeal was dismissed in case R 2388/2015-5 of 24/10/2016. The decision is now final and therefore, the goods on which the opposition is based are the following:

Class 9:         Computer software, hardware, interfaces, cables, terminals, components, discs, discs drivers; data storage & retrieval systems; isolators; computer programmes, peripherals & accessories; data processing apparatus & parts thereof; electronic; & computer games; integrated circuits; magnetic media for sound, visuals & data processing recording; printers, converters, voltage stabilizers, regulators, invertors.

Class 16:        Computer programmes (printed form); manuals; operating instructions; books, publications; magazines; stationary items; ribbons, office requisites for use with computers; pens, pencils, instructional & teaching materials; paper and paper articles; cardboard and cardboard articles; printed matters.

The contested goods and services are the following:

Class 9:         Computer software for creating fonts; typeface computer software; type designs recorded as latent images in machine-readable data storage media; computer software for creating typefaces.  

Class 16:        Instructional books and users' manuals, all related to fonts and typefaces and computer programs for creating fonts and typefaces.

Class 42:        Computer and computer software consulting services; technical support services; providing on-line support services for computer program users, all of the foregoing in relation to font and typeface software.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 (the ‘Canon’ criteria).

Contested goods in Class 9

The contested computer software for creating fonts; typeface computer software; computer software for creating typefaces are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested type designs recorded as latent images in machine-readable data storage media are included in the broad category of the opponent’s data storage & retrieval systems. Therefore, they are identical.

Contested goods in Class 16

The contested instructional books and users' manuals, all related to fonts and typefaces and computer programs for creating fonts and typefaces are included in the broad category of the opponent’s manuals. Therefore, they are identical.

Contested services in Class 42

The contested computer and computer software consulting services; technical support services; providing on-line support services for computer program users, all of the foregoing in relation to font and typeface software are similar to the opponent’s computer software in Class 9. This is because, usually, consumers expect to receive this type of services together with the acquisition of the software. Thus, they are complementary and have the same providers, distribution channels and consumers.

 

2. The signs

ACUMEN	ACUMEN
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and a part of the contested goods and services, namely all the contested goods in Classes 9 and 16 are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Furthermore, the contested services in Class 42, namely computer and computer software consulting services; technical  support services; providing on-line support  services for computer program users, all of the foregoing in relation to font and typeface software were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these services.

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

Francesca CANGERI SERRANO

María Clara  IBÁEZ FIORILLO

Pierluigi M. VILLANI

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.