AXEAC | Decision 2763772
Date Published: Sep 25, 2017
OPPOSITION No B 2 763 772
Aexeo Technology Ltd., O’Hara House, 3 Bermudiana Road, Hamilton HM 08, Bermuda (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative)
a g a i n s t
Beijing Happy Tiger InfoTech Co., Ltd, 2 Cuinan Rd, Liangzhuang Village, Zhaoquanying County, Shunyi District, Beijing, People’s Republic of China (applicant), represented by G. Li, Nipon Optics (UK) Limited, 29 Hillcrest Road, Nailsea, Bristol North Somerset BS48 2JA, United Kingdom (professional representative).
On 12/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 763 772 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 478 886 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 478 886. The opposition is based on, inter alia, United Kingdom trade mark registration No 3 120 162. 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 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 United Kingdom trade mark registration No 3 120 162.
- The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; computer software platforms; downloadable computer software applications; data storage devices; data banks; computer software for database management; electronic databases; data processing programs; computer operating systems; data processing software and apparatus; data encryption apparatus; data protection backup units and software; mobile data communication apparatus; computer software for controlling and managing access server applications; network access services operating software and hardware; financial management software; software for producing financial models, relating to financial history and handling financial matters, transactions and trades; computer software for application and database integration; computer software for creating searchable databases of information and data; secure terminals for electronic transactions; software for facilitating secure financial transactions; encoded cards for use in relation to the electronic transfer of financial transactions; software for ensuring the security of electronic systems.
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 services and software as a service and rental of software; software research; installation and customization of computer applications software; updating and maintenance of computer software; programming of data processing equipment; project studies relating to software; testing of computing equipment; maintaining websites; cloud computing; software as a services [SaaS]; platform as a service [PaaS]; application service provider [ASP]; infrastructure as a service [IaaS]; application service provider (ASP) and software as a service [Saas] featuring computer software for receiving, recording, processing, transmitting, storing, monitoring, managing, sharing and displaying financial information including data on financial transactions and trades; application services provider [ASP] and software as a services [Saas] featuring computer software that enable the implementation, operation, hosting and maintenance of electronic commerce across multi-platform, multi-commerce channels and applications, the conduct of business across those platforms, including reporting, business and economic analytics, and decision support; application services provider [ASP] and software as a services [Saas] featuring computer software for online business process automation, global business management, accounting, financial management, office and business productivity, electronic funds transfer, supply chain management, electronic data interchange and data collection systems; software as a service (SAAS) services and application service provider [ASP] featuring software to enable the tracking of time and expenses, budgeting, preparation, dissemination and processing of invoices and payments, bookkeeping, preparation and management of work orders, sharing of documents and electronic mail messaging on a computer or via the Internet and other communication networks; application services provider [ASP] and software as a services [Saas] that enables users to create manage real time transactions flowing through an integrated system and allow users to customize viewing windows into specific business workflows and transactions; application services provider [ASP] and software as a services [Saas] featuring security software that enables business global continuity and disaster recovery to ensure recovery of all major systems and technologies; file sharing services, namely, hosting a website featuring technology enabling users to upload and download electronic files; providing an online website for creating and hosting micro websites for businesses; data security services; troubleshooting of computer hardware and software problems; maintenance and updating of computer software relating to computer security and prevention of computer risks; information, advisory and consultancy services relating to all of the aforesaid services.
The contested goods and services are the following:
Class 9: Computer programmes; Computer programmes, recorded; Computers; Computer operating programs; Computer operating programs, recorded; Computer programs, recorded; Computer programs [downloadable software]; Data processing apparatus; Compact discs [read-only memory]; Computer software; Computer software, recorded; Monitors [computer programs]; Disk drives for computers; Video game cartridges; Electronic publications, downloadable; USB flash drives; Computer software applications, downloadable; Encoded key cards; Floppy disks.
Class 42: Technical research; Research and development of new products for others; Computer programming; Computer software design; Updating and design of computer software; Updating of computer software; Maintenance of computer software; Computer system analysis; Creating and maintaining web sites for others; Data conversion of computer programs and data [not physical conversion]; Consultancy in the design and development of computer hardware; Software as a service [SaaS]; Providing information on computer technology and programming via a web site; Cloud computing; Rental of web servers; Information technology [IT] consultancy.
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
Data processing apparatus; compact discs [read-only memory]; computer software are identically included in both lists of goods, despite minor differences in wordings (where applicable).
The contested computers are included in the broad category of the opponent’s data processing equipment. Therefore, they are identical.
The contested computer programmes; computer programmes, recorded; computer operating programs; computer operating programs, recorded; computer programs, recorded; computer programs [downloadable software]; monitors [computer programs] overlap with the opponent’s computer software. Therefore, they are identical.
The contested computer software, recorded; computer software applications, downloadable are included in the broader category of the opponent’s computer software. Therefore, they are identical.
The contested disk drives for computers; video game cartridges; USB flash drives; floppy disks are included in, or overlap with, the opponent’s data storage devices. Therefore, they are identical.
The contested encoded key cards overlap with the opponent’s encoded cards for use in relation to the electronic transfer of financial transactions, insofar as both categories include key cards that can be used for payments, for example for pay-per-view services. Therefore, they are identical.
The contested electronic publications, downloadable are electronic versions of traditional media, such as e-books, electronic journals, online magazines, online newspapers, etc. It is becoming common to distribute books, magazines and newspapers to consumers through tablet reading devices, by means of so-called apps, in the form of electronic publications. Consequently, there exists a complementary relationship between software/apps and downloadable electronic publications. Their producers can be the same, they have the same distribution channels and the relevant public is also generally the same. These goods are considered similar.
Contested services in Class 42
Maintenance of computer software; maintaining web sites for others; consultancy in the design and development of computer hardware; software as a service [SaaS]; cloud computing are identically included in both lists of services, despite minor differences in wordings (where applicable).
The contested technical research; research and development of new products for others are included in the broad category of the opponent’s scientific and technological services and research and design relating thereto. Therefore, they are identical.
The contested computer programming; computer software design; updating and design of computer software; updating of computer software are included in the broad category of the opponent’s design and development of computer hardware and software. Therefore, they are identical.
The contested providing information on computer technology and programming via a web site; information technology [IT] consultancy are included in, or overlap with, the opponent’s information, advisory and consultancy services relating to technological services, insofar as the latter concern the field of IT. Therefore, they are identical.
The contested rental of web servers overlaps with the opponent’s hosting services. Therefore, they are identical.
The contested computer system analysis is similar to the opponent’s installation and customization of computer applications software. These services have the same distribution channels, target the same relevant public (e.g. companies interested in modernising their IT systems) and are provided by the same undertakings.
The contested creating web sites for others; data conversion of computer programs and data [not physical conversion] are similar to the opponent’s design and development of computer software. These services have the same distribution channels, target the same relevant public and are provided by the same undertakings.
- 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 and at business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication and/or specialised nature, or terms and conditions of the purchased goods and services.
- The signs
AEXEO | AXEAC |
Earlier trade mark | Contested sign |
The relevant territory is the United Kingdom.
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).
Both marks are word marks that do not have any meaning in the relevant territory and therefore have a normal degree of distinctiveness.
Visually and aurally, both signs consist of five letters. The signs are similar to the extent that they both begin with the letter ‘A’ and also include the letters ‘E’ and ‘X’; they differ in the letters ‘EO’ in the earlier mark and ‘AC’ in the contested sign. Importantly, the signs coincide in their first letter and in the unusual and very similar combinations of letters ‘AEX’ versus ‘AXE’, which are difficult to differentiate from the consumer’s perspective. Furthermore, from an aural point of view, the sounds of the letters ‘AEXE’ and ‘AXE’ are highly similar.
Therefore, the signs are visually and aurally similar at least 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.
- 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.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In the present case, the majority of the goods and services at issue are identical and the remaining goods and services are similar. The degree of attention may vary from average to high.
The signs are visually and aurally similar at least to an average degree to the extent that they are the same length, five letters, and have very similar beginnings, ‘AEX’ versus ‘AXE’. The differences, mainly based on the different endings of the marks, are not sufficient to counteract the similarities between the signs.
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).
In an overall assessment of the relevant factors of the case, and based on the average degree of inherent distinctiveness of the earlier mark, it is concluded that the differences identified between the signs are insufficient to enable the relevant public, even when the degree of attention is high, to safely distinguish between the signs. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
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 United Kingdom trade mark registration No 3 120 162. It follows that the contested trade mark must be rejected for all the contested goods and services.
As the earlier right United Kingdom trade mark registration No 3 120 162 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Solveiga BIEZA | Jorge ZARAGOZA GOMEZ | Cristina CRESPO MOLTÓ |
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.