CONVERSE | Decision 2675281 - Conlance GmbH v. All Star C.V.
Date Published: Oct 1, 2017
OPPOSITION No B 2 675 281
Conlance GmbH, Werner-von-Siemens-Straße 6, 86159 Augsburg, Germany (opponent), represented by Rau & Rau, Widenmayerstr. 28, 80538 München, Germany (professional representative)
a g a i n s t
All Star C.V., One Bowerman Drive, Beaverton, Oregon 97005-6453, United States of America (applicant), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative).
On 05/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 675 281 is partially upheld, namely for the following contested goods and services:
Class 9 Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; software; application software; cases for mobile phones, tablets and portable computing devices; holders and protective cases for mobile phones and portable computing devices; parts and fittings for the aforesaid [Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; software; application software]
Class 41 Education; providing of training; providing digital music from the internet (not downloadable); on-line, entertainment services; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; providing non-downloadable films and television programs on the internet; providing on-line information and news in the fields of sports, fashion and entertainment; information and advisory services relating to the aforesaid.
Class 42 Hosting an online website community for registered users to share information, photos, audio, and video content.
2. European Union trade mark application No 14 544 837 is rejected for all the above goods and services. It may proceed for the remaining goods and 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 14 544 837, namely against some of the goods and services in Classes 9, 41 and 45 and all of the services in Class 42. The opposition is based on international trade mark registration No 1 154 950 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.
- 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 35: Business consulting services; procurement of contracts for third parties concerning the buying and selling of goods and the provision of services, procurement of trade and economic contacts, also via the Internet.
Class 37: Installation, repair and maintenance of hardware for computer systems and networks in the IT sector; repair services of computer hardware.
Class 38: Telecommunications, especially by means of platforms and portals on the Internet.
Class 41: Providing of training, particularly training in the field of electronic data processing.
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.
In the notice of opposition, the opponent indicated that the opposition was directed against some of the goods and services covered by the contested mark. However, the notice of opposition contains slightly different wording for Class 45 from that in the Office’s database. The Opposition Division will rely on the list of goods and services as included in the official EUIPO database. Therefore, the contested goods and services are the following:
Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; software; application software; cases for mobile phones, tablets and portable computing devices; holders and protective cases for mobile phones and portable computing devices; parts and fittings for the aforesaid.
Class 41: Education; providing of training; providing digital music from the internet (not downloadable); on-line, entertainment services; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; providing non-downloadable films and television programs on the internet; providing on-line information and news in the fields of sports, fashion and entertainment; information and advisory services relating to the aforesaid.
Class 42: Hosting an online website community for registered users to share information, photos, audio, and video content.
Class 45: On-line social networking services; internet-based social networking for entertainment services; information and advisory services relating to the aforesaid.
An interpretation of the wording of the list of the goods and services is required to determine the scope of protection of these goods and services.
The term ‘particularly’, used in the opponent’s list of goods and 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).
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.
Contested goods in Class 9
Magnetic data carriers; data processing equipment and computers; software are identically contained in both lists of goods.
The contested recording discs are included in the broad category of the opponent’s CDs, DVDs and other digital recording media. Therefore, they are identical.
The contested application software is included in the broad category of the opponent’s computer software. Therefore, they are identical.
The contested apparatus for recording, transmission or reproduction of sound or images is included in the broad category of the opponent’s data processing equipment. Therefore, they are identical.
The contested cases for tablets and portable computing devices; holders and protective cases for portable computing devices are related to the opponent’s computers. It is clear that a link exists between these goods and they can be considered complementary to each other, in the sense that the contested goods are intended to be used for carrying and protecting the opponent’s goods. Furthermore, they are produced by the same manufacturers, can be sold through the same distribution channels, are often used in combination and target the same public. Therefore, these goods are similar.
The contested parts and fittings for the aforesaid [apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; software; application software] can be integral parts of the finished contested goods (e.g. computers) and can be necessary for the finished goods to function (e.g. parts such as the motherboard of a computer system). Therefore, the Opposition Division finds that the contested parts and fittings for the aforesaid [apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment and computers; software; application software] are similar to the opponent’s finished goods in Class 9, namely magnetic data carriers; CDs, DVDs and other digital recording media; data processing equipment, computers; computer software. This finding is based on the fact that parts and fittings are often produced by the same undertaking that manufactures the final goods and these goods target the same purchasing public, as in the case of spare or replacement parts. The public concerned may expect components, including crucial elements (parts and fittings) for the abovementioned goods to function properly, to be produced by or under the control of the ‘original’ manufacturer. Furthermore, such goods can be sold in the same stores (e.g. a monitor (part of the computer unit) can be produced by the same company that produces computers and will be sold in the same store as computers).
The opponent’s telecommunications, especially by means of platforms and portals on the Internet in Class 38 are services that allow people to communicate by remote means. It is common for companies offering certain services to offer related goods at the same time. For instance, companies offering telecommunications services frequently offer mobile phones and all of their accessories, such as the contested cases for mobile phones; holders and protective cases for mobile phones in Class 9. Furthermore, telecommunications companies often have stores where goods branded with their company name are sold. Therefore, these contested goods are similar to a low degree to the opponent’s services. Although the natures of the contested goods and of the opponent’s services are different, these goods and services can be used, broadly speaking, for the same purpose (i.e. telecommunications) and can coincide in their distribution channels. They can target the same relevant public and come from the same companies.
The contested parts and fittings for the aforesaid [cases for mobile phones, tablets and portable computing devices; holders and protective cases for mobile phones and portable computing devices] refer to the components and smaller individual pieces of which the said goods are made. The Opposition Division is of the opinion that these goods have nothing relevant in common with the opponent’s goods in Class 9. The mere fact that a certain product can be composed of several components does not establish automatic similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). They have different purposes, distribution channels and method of use. Furthermore, these goods are not complementary to or in competition with one another and they target different relevant publics, since the contested goods target a different public from most of the opponent’s goods in the same class (manufacturers of the goods versus consumers of the finished goods, respectively). Therefore, they are dissimilar.
The same conclusion is reached when comparing these contested goods with the opponent’s remaining services in Classes 35, 37, 38, 41 and 42, which cover a broad range of services from business consulting services, installation, repair and maintenance of hardware for computer systems and networks in the IT sector, telecommunications to providing of training and scientific and technological services and research and design relating thereto. Their natures, purposes and methods of use are clearly different. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and their sales outlets are normally different. Therefore, they are dissimilar.
Contested services in Class 41
The contested education includes, as broader category, the opponent’s providing of training, particularly training in the field of electronic data processing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
The contested providing of training and the opponent’s providing of training, particularly training in the field of electronic data processing refer to the same services. Therefore, they are identical.
The contested information and advisory services relating to the aforesaid [providing of training] is similar to a high degree to the opponent’s providing of training, particularly training in the field of electronic data processing, as these services are complementary and they may coincide in their service providers, distribution channels and relevant public.
The contested information and advisory services relating to the aforesaid [education] are similar to a high degree to the opponent’s providing of training, particularly training in the field of electronic data processing, given that they are complementary and may coincide in their service providers, distribution channels and relevant public.
The contested providing digital music from the internet (not downloadable); providing non-downloadable films and television programs on the internet; providing on-line information and news in the fields of sports, fashion and entertainment; on-line, entertainment services; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; information and advisory services relating to the aforesaid [providing digital music from the internet (not downloadable); providing non-downloadable films and television programs on the internet; providing on-line information and news in the fields of sports, fashion and entertainment; on-line, entertainment services; on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network] are, or are related to, education and/or entertainment services provided via the internet. As such, these services are related to the opponent’s computer software in Class 9, as these goods and services can coincide in their producers (e.g. the same company might write computer programs and provide music/television/library services), have the same relevant public and can be considered complementary. Therefore, these goods and services are similar to a low degree.
Contested services in Class 42
The contested hosting an online website community for registered users to share information, photos, audio, and video content is included in the broad category of, or overlaps with, the opponent’s hosting of web pages in the Internet for third parties. Therefore, they are identical.
Contested services in Class 45
The contested on-line social networking services; internet-based social networking for entertainment services; information and advisory services relating to the aforesaid [on-line social networking services; internet-based social networking for entertainment services] consist of a broad range of services rendered to individuals in relation to personal or social events that allow users to share ideas, pictures, posts, activities, events and interests with people in their network. These services have nothing relevant in common with the opponent’s services in Class 42, which relate, inter alia, to scientific and technological services and research and/or IT services such as the design and development of computer hardware and software. The mere fact that networking services can be offered using software or that these services can be of interest to the same public is not enough to render them similar. They have different natures, are provided by different companies and are distributed or sold through different channels. They are neither complementary to nor in competition with each other. Therefore, they are dissimilar. Furthermore, the opponent’s remaining goods and services in Classes 9, 35, 37, 38 and 41 do not have the same purpose or nature as any of the contested services. These goods and services are dissimilar as well.
- 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 (to various degrees) are directed at the public at large as well as at a specialised public with specific knowledge and expertise. The degree of attention is average.
- The signs
conlance | CONVERSE |
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 verbal elements ‘conlance’ and ‘CONVERSE’ are not meaningful in certain territories, for example in those territories where Bulgarian and Greek are understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian- and Greek-speaking parts of the public.
Both marks are word marks. The earlier mark is the word mark ‘conlance’, while the contested sign is the word mark ‘CONVERSE’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.
None of the elements of the marks has a meaning in relation to the goods and services in question for the relevant public and both marks are, therefore, distinctive.
Visually, the signs coincide in the sequence of letters ‘CON*E’, present identically in both signs. However, they differ in the letters ‘LANC’ in the earlier mark and ‘VERS’ in the contested sign, all placed in the middle of the marks.
The first and most significant parts of the conflicting marks are identical. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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 similar to an average degree.
Aurally, contrary to the applicant’s submission that both signs consist of two syllables, the Opposition Division points out that the signs are both made up of three syllables of an equal number of letters, and they are pronounced as /CON-LAN-CE/ and /CON-VER-SE/. Therefore, the pronunciation of the signs coincides in their first syllable, /CON/, pronounced identically in both signs, and in their final syllables, /CE/ in the earlier mark and /SE/ in the contested sign, since it is most likely that the consonants ‘C’ and ‘S’ will be pronounced almost identically. The pronunciation differs in the sign’s second syllables (/LAN/ in the earlier mark and /VER/ in the contested sign).
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. Contrary to the applicant’s initial assertions that the relevant consumer would clearly perceive the prefix ‘con-’ as a separate and identifiable element in both marks, the Opposition Division notes that the relevant public would not separate the marks into several components; on the contrary, the relevant public would perceive the marks as a whole, as was pointed out by the applicant in its subsequent arguments.
Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
- 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
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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.
The goods and services are partly identical, partly similar (to various degrees) and partly dissimilar. They target the public at large and business customers with specific professional knowledge or expertise. The degree of attention is average.
The marks are visually and aurally similar to an average degree on account of the sequence of letters that they have in common. Specifically, the marks are visually similar to the extent that they coincide in the sequence of letters ‘CON*E’ and aurally similar to the extent that their first and final syllables, ‘CON’ and ‘S/CE’, will be pronounced in the same way by the relevant public. Although the marks have visual differences, as explained above in section c) of this decision, these differences between the signs are not capable of substantially influencing the consumer’s overall impression by making the signs sufficiently different and safely excluding a likelihood of confusion on the part of the public. The differing letters in the marks are in the middle of the signs and will not be immediately detected, since consumers normally perceive a sign as a whole and are usually less aware of differences between longer signs.
Furthermore, as explained above in section c) of this decision, the conceptual aspect does not influence the comparison. The verbal elements ‘conlance’ and ‘CONVERSE’ will not be associated with any meaning by the relevant public on which the attention has been focused. In fact, they will be perceived as fanciful terms by the Bulgarian- and Greek-speaking parts of the relevant public. Therefore, neither of the signs conveys a concept that could render them more distinguishable and thus avoid the potential confusion between them resulting from their visual and aural similarities.
All the aforementioned findings lead to the conclusion that the marks convey similar overall impressions.
Considering all the above and also bearing in mind that the earlier mark has a normal degree of distinctiveness and that average consumers rarely have the chance to make a direct comparison between marks, but must trust in their imperfect recollection of them, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian- and Greek-speaking parts 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 various degrees) to those of the earlier trade mark.
The rest of the contested goods and 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 goods and 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
Francesca CANGERI SERRANO | José Antonio GARRIDO OTAOLA | Michele M. BENEDETTI-ALOISI |
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.