EMP | Decision 2698622
Date Published: Oct 1, 2017
OPPOSITION No B 2 698 622
Coveme S.p.A., Localita' Sant' Andrea, Via Gregorcic N. 16, 34170 Gorizia, Italy (opponent), represented by Gioia Trombetti, Via Portazza, 8, 40139 Bologna, Italy (professional representative)
a g a i n s t
Deutsche Telekom AG, Friedrich-Ebert-Allee 140, 53113 Bonn, Germany (holder), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).
On 05/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 698 622 is partially upheld, namely for the following contested goods:
Class 9: Photographic, cinematographic, optical, measuring and teaching apparatus and instruments; apparatus and instruments for accumulating electricity; apparatus for recording, transmission, processing and reproduction of sound, images or data; magnetic data carriers; hardware for data processing; computer; CDs, DVDs and other digital recording media; computer software; computer software to enable connection to databases and the Internet.
2. International registration No 1 271 034 is refused protection in respect of the European Union for all of the above goods. 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 international registration designating the European Union No 1 271 034, namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 2 386 902. The opponent invoked Article 8(1)(a) and (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
The goods on which the opposition is based are the following:
Class 9: Photography equipment, more particularly unexposed photographic film, slide film, slide film mounts; tracing paper for printers, in particular laser printers and ink jet printers.
The contested goods are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission, processing and reproduction of sound, images or data; magnetic data carriers; calculating machines; hardware for data processing; computer; CDs, DVDs and other digital recording media; computer software; data recorded in electronic form downloadable; electronic publications [downloadable]; computer software and telecommunications apparatus (including modems) to enable connection to databases and the Internet.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The terms ‘in particular’ and ‘more particularly’ used in the opponent’s list of goods, indicate that the specific goods 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).
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
The contested photographic, cinematographic, optical, measuring and teaching apparatus and instruments; apparatus for recording, transmission, processing and reproduction of sound, images or data overlap with the opponent’s photography equipment. Therefore, these goods are identical.
The contested apparatus and instruments for accumulating electricity include, inter alia, the batteries for cameras. These goods, therefore, share a certain point of contact with the opponent’s photography equipment, as they may have the same producers and distribution channels, they target the same relevant public and they are complementary. Therefore, they are similar.
The contested magnetic data carriers and CDs, DVDs and other digital recording media may be needed for the opponent’s photography equipment to store the data obtained through its use and to function correctly. Accordingly, the aforementioned goods are complementary and can be produced by the same undertakings. Moreover, they are distributed through the same channels, are sold in the same specialised shops and target the same consumers. Therefore, they are considered similar.
The term hardware includes the machines, wiring and other physical components of a computer or other electronic system while the term computer itself is the type of hardware. Therefore, the contested hardware for data processing and computers are similar to the opponent’s photography equipment as these goods can coincide in their producers, end users and distribution channels.
The contested computer software and computer software to enable connection to databases and the Internet share a certain point of contact with the opponent’s photography equipment, as there might be software to increase the functionalities of a digital camera or software for transmission of photos from digital camera to any other electronic devices. Moreover, many digital cameras are able to connect to internet. These goods might be distributed through the same distribution channels and produced by the same producers as the opponent’s goods. Furthermore, they are complementary. Thus, they are considered similar.
Finally, the remaining scientific, nautical, surveying, weighing, signalling, checking and life-saving apparatus and instruments; apparatus and instruments for conducting, switching, transforming, regulating or controlling electricity; calculating machines; data recorded in electronic form downloadable; electronic publications [downloadable]; telecommunications apparatus (including modems) to enable connection to databases and the Internet are deemed to be dissimilar to the opponent’s goods. They are all products of a different origin and with a different purpose (e.g. for scientific research, for controlling electricity, for surveying purposes, specific purpose of a software for connection to databases etc.) compared to the nature and purpose of the opponent’s goods in Class 9. Moreover, the goods do not have the same relevant public and are not likely to come from the same undertakings. They are neither complementary, or in competition.
- The signs
EMP | EMP |
Earlier trade mark | Contested sign |
The signs are identical.
- Global assessment, other arguments and conclusion
The contested goods are partly identical or similar and partly dissimilar to the opponent´s goods and services. The signs are identical.
Given the identity of the signs, the opposition must be upheld according to Article 8(1)(a) EUTMR for the goods found to be identical, namely photographic, cinematographic, optical, measuring and teaching apparatus and instruments; apparatus for recording, transmission, processing and reproduction of sound, images or data. Moreover, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld insofar as it is directed against the goods found to be similar to the opponent´s goods, namely apparatus and instruments for accumulating electricity; magnetic data carriers and cds, dvds and other digital recording media, hardware for data processing and computers.
The rest of the contested goods are dissimilar. As the 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 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Christian | Begoña | Pedro |
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.