c | Decision 2700840

Date Published: Sep 25, 2017

OPPOSITION No B 2 700 840

GKS Handelssysteme GmbH, Lindenbaumstraße 32c, 42659 Solingen, Germany (opponent), represented by Lexea Rechtsanwälte, Am Römerturm 1, 50667 Köln, Germany (professional representative)

a g a i n s t

Critizr, 165 avenue de Bretagne, 59000 Lille, France (applicant), represented by SCP Bignon Lebray Avocats, 4 rue des Canonniers, 59041 Lille Cedex, France (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 700 840 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 096 902, namely against all the goods in Class 9, some of the services in Class 35, all of the services in Classes 36, 38 and 41, some of the services in Class 42 and all the services in Class 45. The opposition is based on, European Union trade mark registration No 12 556 387. 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 services on which the opposition is based are the following:

Class 35:        Computerised business information processing services; Business information services provided on-line from a computer database or the internet; Provision of on-line business and commercial information; Rental of advertising space on the internet; Operating online marketplaces for sellers and buyers of goods and services; Providing evaluative feedback and performance ratings in relation to sellers' goods and services, the value and price of sellers' goods, buyers' and sellers' performance, delivery, and overall experience in connection therewith, namely consumer consultancy with regard to suppliers and their price/performance; Providing a searchable on-line advertising guide featuring the goods and services of on-line vendors; providing a searchable on-line evaluation database for buyers and sellers; on-line trading services to facilitate the sale of goods and services by others via a computer network; Providing on-line auction services; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Advertising services for the promotion of e-commerce; provision of space on web sites for advertising goods and services; Computerised stock ordering; Trade marketing [other than selling]; Arranging of trading transactions and commercial contracts; Arranging of presentations for business purposes; Business administration; Dissemination of advertising for others via the Internet; Dissemination of advertising for others via an on-line communications network on the internet; Rental of sales stands; Publicity material rental; Brokerage of name and address based lists; Advertising, including promotion relating to the sale of articles and services for third parties by the transmission of advertising material and the dissemination of advertising messages on computer networks; Trade promotional services; Mediation and conclusion of commercial transactions for others; Arranging of commercial and business contacts; Arranging of contractual [trade]services with third parties.

Class 38:        Providing user access to global computer networks; Providing access to databases; Internet portal services; Signal transmission for electronic commerce via telecommunication systems and data communication systems; Providing telecommunication channels for teleshopping services.        

Class 42:        Constructing an internet platform for electronic commerce; Provision of search engines for the Internet; Design and development of computer hardware and software; Hosting of digital content on the internet; providing customized on line web pages featuring user-defined information, which includes search engines and online web links to other websites; Designing online web pages for advertising purposes; Providing a commercial platform for the dispatch, promotion, sale and resale of items via a global computer network, and for the collection and dissemination of statistical, quantitative and qualitative information regarding the sale and resale of items via a global computer network.

.

The contested goods and services are the following:

Class   9:        Application software for mobile phones; Application software for wireless devices; Application software for cloud computing services; Application software for social networking services via internet; Internet servers; Computer software downloaded from the internet.

Class 35:        Advertising; Direct mail advertising; Computerized file management; Organization of exhibitions for commercial or advertising purposes; On-line advertising on a computer network; Rental of advertising time on communication media; Publication of publicity texts; Rental of advertising space; Dissemination of advertising matter; Public relations services; Outsource service provider in the field of customer relationship management; Advice and information about customer services and product management and prices on internet sites in connection with purchases made over the internet; Advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; Customer loyalty services for commercial, promotional and/or advertising purposes; Customer club services, for commercial, promotional and/or advertising purposes; Commercial trading and consumer information services; Organisation and management of customer loyalty programs; Advertising services provided via the internet; Commercial information services, via the internet; Advertisement for others on the Internet; Compilation of advertisements for use as web pages on the Internet; Presentation of companies on the Internet and other media; Subscriptions (arranging -) to a telematics, telephone or computer service [internet]; Business management consultancy, also via the Internet; Providing an on-line commercial information directory on the internet; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet.

Class 36:        Financial services provided over the Internet and telephone.

Class 38:        Telecommunication services; Information about telecommunication; Communications by cellular phones; Electronic bulletin board services [telecommunications services]; Providing telecommunications connections to a global computer network; News agencies; Rental of telecommunication equipment; Teleconferencing services; Electronic messaging; Rental of access time to global computer networks; Broadcasting of programmes via the internet; Transmission of data via the Internet; Computer communication and Internet access; Internet based telecommunication services; Communications services provided over the Internet; Transmission of multimedia content via the Internet; Digital transmission of data via the Internet; Electronic transmission of computer programs via the internet; Providing access to information on the Internet; Access to content, websites and portals; Providing access to platforms and portals on the Internet; Providing user access to platforms on the Internet; Transmission of user-generated content via the Internet; Transfer of information and data via online services and the Internet; Transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the Internet; Radio broadcasting.

Class 41:        Education services relating to customer satisfaction.

Class 42:        Computer programming; Consultancy in the field of computers; Data conversion of computer programs and data [not physical conversion]; Conversion of data or documents from physical to electronic media; Software as a service [SaaS]; Computer programming for the internet; Hosting of digital content on the internet; Hosting websites on the Internet; Creation of internet web sites; Programming of Internet security programs; Compilation of web pages for the Internet; Rental of Internet security programs; Updating Internet pages; Hosting platforms on the Internet; Hosting memory space on the Internet; Providing search engines for the internet; Programming of software for Internet platforms; Design and development of Internet security programs; Development of software solutions for internet providers and internet users; Constructing an internet platform for electronic commerce; Design, creation, hosting and maintenance of internet sites for third parties; Creating electronically stored web pages for online services and the internet; Consultancy relating to the design of home pages and Internet sites; Consultancy relating to the creation of homepages and Internet pages; Commissioned writing of computer programs, software and code for the creation of web pages on the Internet; Development of computers; Rental of software.

Class 45:        Internet based personal introduction services; On-line social networking services; Online social networking services accessible by means of downloadable mobile applications.

Some of the contested services are identical to services on which the opposition is based, for instance, the contested providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet is identical to the opponent´s providing a searchable online advertising guide featuring the goods and services of other on-line vendors albeit with slightly different wording.

Furthermore, the contested advertising services include, as a broad category, the opponent´s advertising, including promotion relating to the sale of articles and services for third parties by the transmission of advertising material and the dissemination of advertising messages on computer networks, and the contested rental of advertising space includes, as a broad category, the opponent´s rental of advertising space on the internet. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical, or at least similar, to the services of the earlier mark.

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 deemed to be identical or at least similar are directed at the public at large, and at business customers with specific professional knowledge or expertise.

Given the nature of some of the goods and services deemed to be identical or at least similar (e.g. advertising/promotional services, financial services), and the fact that they may have important financial consequences for their users, the relevant consumers are likely to display a level of attention that varies from average to relatively high.

3. The signs

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).

Concerning the opponent’s argument that it has registered a black and white mark which it uses in blue as depicted in the following:

, and that this should be considered when comparing the signs, the Opposition Division notes, that it is the sign as registered which is relevant for the comparison of signs, not any stated plans or putative use.

The earlier mark is a figurative mark. It contains a white, straight-backed letter “C” within a closed, crown-shaped device or outline, also in white. These elements are depicted against a darker, spherical background. The contested sign is also a figurative mark. It depicts a rounded letter ‘C’ in white, with three white dashes flanked at its aperture, against a blue, circular background. However, owing to its particular stylisation, the letter in the contested sign may not be perceived as such by a part of the relevant public.

The public in the relevant territory will perceive the letter “C”, included in both signs as a letter of the Latin alphabet. The distinctiveness of this letter is deemed to be normal, since it does not refer to any characteristic of the relevant goods and services.

The letter “C” is, in principle, the most distinctive element in both marks, given that the spherical and the circular backgrounds, respectively, are simple geometric shapes, and that the remaining elements are of a rather decorative nature.

The marks have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in that they both depict a letter in white which may be commonly viewed as the letter “C”, set against round, geometric backgrounds. However, they differ in all other respects. In the earlier mark, the letter ‘C’ is depicted in stretched form, and is encased in a crown-like device. The background features a trompe l´oeil effect. The sheen and shading depicted give it perspective, so that a dark-hued sphere is projected, in contrast to the flush, circular background of the contested sign, itself a deep blue. In further contrast, the letter “C” of the contested sign has a profoundly curved spine, akin to an open-ended circle or incomplete letter “O”. Three disc-shaped dashes, evocative of sound waves, emit from the open end. The foreground elements radiate outwards in contrast to those of the earlier sign which are seen to enclose, or be contained.

Although the central letter is the most distinctive element in both signs, in the present case account needs to be taken of the fact that the conflicting signs are short signs.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs small differences may frequently lead to a different overall impression.

Therefore, the differing figurative elements of the signs, even if less distinctive than the letter ‘C’, still have an impact on the overall visual impression the signs create.  The crown-shaped device of the earlier mark contains the letter “C” and has an unusually abstract outline for a sovereign symbol. Also the three white dashes being expelled from the contested sign give a different visual impression. The striking blue colour is a further difference. Bearing in mind the foregoing, the signs are visually dissimilar.

Aurally, the signs are identical for those consumers who perceive the letter “C” common to both signs, because it is the only pronounceable element.

Conceptually, the letter “C”, if perceived in both signs, will be associated with a letter of the Latin alphabet, as explained above, against geometric backgrounds, having the semantic content of either a sphere or a circle, respectively. The earlier mark has the added concept of a crown device, while the contested sign depicts dashes which are organised in such a way as to give the impression of sound waves.

Therefore, the signs are conceptually at most similar to an average degree, namely for those members of the public who perceive the letter “C” in the contested sign.

As the signs have been found similar for a part of the relevant public 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 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, despite the presence of some non-distinctive and weak elements in the mark as stated above in section c) of this decision.

5. 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/or 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).

The signs coincide merely to the extent that they feature the letter ‘C’ set against geometric backgrounds.

Considering this, the way the letter appears in each sign is determinant. The letter ‘C’ is depicted in a very different manner in the two signs. As mentioned above, the signs are visually dissimilar overall. In spite of the identity or similarity of some of the services – this is not sufficient to find a likelihood of confusion. The relevant consumer will be aware that letters of the alphabet are capable of being represented in very different ways. Furthermore, the length of the signs may affect the influence of their respective differences. The shorter a sign, the more easily the public is able to perceive all of its single elements. As described in the comparison of signs, the representation of the letter ‘C’, for those members of the public who are likely to perceive it in both signs, is very different in each trade mark thus clearly distancing them. Furthermore, the contained nature of the earlier sign´s crown contrasts with the dashes of the contested mark, which radiate out from the letter C´s aperture, differentiating the signs further. The earlier mark is endowed with an average degree of distinctive character. The overall visual impression is that the signs are stylised in a sufficiently different way, such that the differences in their representation eclipse any common elements.

Given that the actual representations of the signs differ in significant ways, there is no risk that the relevant consumers will be misled, taking into account also that their level of attention will be at least average, if not higher.

Considering all the above, even assuming that the goods and services are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, 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

Julia SCHRADER

Keeva DOHERTY

Natascha GALPERIN

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.