GO PLATFORM | Decision 1864712 - International Business Machines Corporation v. X.commerce, Inc.

Date Published: Sep 25, 2017

OPPOSITION No B 1 864 712

International Business Machines Corporation, New Orchard Road, Armonk, New York 10504, United States of America (opponent), represented by Sylvie Martin, IBM France Intellectual Property Department ZAC Meridia, Immeuble “The Crown”, 21 Avenue Simone Veil CS 43338, 06206 Nice Cedex, France (employee representative)

a g a i n s t

X.commerce Inc., 10441 W. Jefferson Blvd, Culver City, California, United States of America (applicant), represented by IPSO SRL, Via Santa Chiara, 15, 10122 Turin, Italy (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 864 712 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 9 717 463 ‘GO PLATFORM’. The opposition is based on the following earlier rights:

- European Union trade mark registration No 5 474 218 ‘PLATFORM’ (word mark);

- European Union trade mark registration No 1 485 853 ‘PLATFORM COMPUTING’ (word mark);

- European Union trade mark registration No 4 610 283 ‘PLATFORM EGO’ (word mark);

- European Union trade mark registration No 4 609 384 ‘PLATFORM ENTERPRISE GRID ORCHESTRATOR’ (word mark).

The opponent invoked Article 8(1)(b) and 8(5) EUTMR in relation to all of the earlier rights on which the opposition is based.

On 18/02/2016 the Opposition Division rendered a decision which resulted in the partial rejection for some goods and services of the contested application on the basis of the earlier EUTM No 4 610 283, and rejected the opposition for the remaining goods and services, for the other earlier EUTMs, namely No 5 474 218, No 1 485 853 and No 4 609 384 and on the ground of Article 8(5) EUTMR.

The decision was appealed and the Board of Appeal decided in case R 699/2016-2 on 05/12/2016 to partially annul the contested decision and remit the case to the Opposition Division for further prosecution. The Boards upheld the decision insofar as it was based on Article 8(1)(b) EUTMR and the earlier EUTM No 4 610 283, but annuls the contested decision insofar as it rejected the opposition on Article 8(1)(b) EUTMR and the earlier EUTMs, namely No 5 474 218, No 1 485 853 and No 4 609 384.

The opponent and the Boards of Appeal made no mention of the other ground of the opposition, namely Article 8(5) EUTMR and, therefore, as this part of the decision was not appealed the findings presented on this point in the Opposition Division’s decision of 18/02/2016 are deemed to have become final.

Therefore, the Opposition Division will now proceed to examine the opposition for the other earlier EUTMs, namely No 5 474 218, No 1 485 853 and No 4 609 384 and on the ground of 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 goods and services on which the opposition is based are the following:

From EUTM No 5 474 218:

Class 9: Systems management software. 

Class 42: Support services for systems management software.

From EUTM No 1 485 853:

Class 9: Computer software for use with facilitating load sharing for networks of computers.

From EUTM No 4 609 384:

Class 9: Software which supports a wide spectrum of business applications being run across a virtualized infrastructure and which can be configured according to user defined business policies, which software can support most application types either directly or through application programming interfaces; software upon which various applications and services can be enabled to use the resources of many separate computers connected by a network; software which can be configured through adaptive policies to conform to the end user's environment; software which coordinates resources and can be extended from servers to storage, license management and networks.

Class 42: Maintenance and technical support services in association with software which supports a wide spectrum of business applications being run across a virtualized infrastructure and which can be configured according to user defined business policies, which software can support most application types either directly or through application programming interfaces; maintenance and technical support services in association with soft-ware upon which various applications and services can be enabled to use the resources of many separate computers connected by a net-work; maintenance and technical support services in association with software which can be configured through adaptive policies to conform to the end user's environment; maintenance and technical support services in association with software which coordinates resources and can be extended from servers to storage, license management and networks; consulting services in association with software which supports a wide spectrum of business applications being run across a virtualized infrastructure and which can be configured according to user defined business policies, which software can support most application types either directly or through application programming interfaces; consulting services in association with software upon which various applications and services can be enabled to use the resources of many separate computers connected by a network; consulting services in association with software which can be configured through adaptive policies to conform to the end user's environment; consulting services in association with software which coordinates resources and can be extended from servers to storage, license management and networks.

The contested goods and services are 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; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer e-commerce software solutions to allow users to perform electronic business transactions via a global computer network; computer software. 

Class 35: Advertising; business management; business administration; office functions; advice for consumers, business management and organization consultancy, business management assistance, commercial or industrial management assistance, all related to the conducting of business for computer e-commerce software solutions. 

Class 42: Technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer consulting services in the field of design, implementation and use of computer e-commerce software systems for others; providing computer ecommerce software solutions to allow users to perform electronic business transactions in the field of ecommerce.

The contested application sought protection for the entire class headings of Classes 9, 35 and 42 of the Nice Classification. It was filed on 07/02/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade mark applications filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9th edition. This was followed whilst taking the previous opposition decision dated 18/02/2016.

However, the Office has since moved to a situation where all trade marks containing class headings will be interpreted according to their literal meaning regardless of their filing date and not the previous situation as described above. According to Communication No 1/16 of the President of the Office of 08/02/2016, a six month transitional period was allocated to allow applicant’s to declare that their intention on the date of filing had been to seek protection in respect of goods and services beyond those covered by the literal meaning of that heading. In the present case the applicant did not file such a declaration. Consequently, only the natural and usual meaning of the applicant’s general indications will be compared.

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 computer software covers, as a broad category, the opponent´s goods in Class 9 (i.e. Systems management software from EUTM No 5 474 218, Computer software for use with facilitating load sharing for networks of computers from EUTM No 1 485 853 and Software which supports a wide spectrum of business applications being run across a virtualized infrastructure and which can be configured according to user defined business policies, which software can support most application types either directly or through application programming interfaces; software upon which various applications and services can be enabled to use the resources of many separate computers connected by a network; software which can be configured through adaptive policies to conform to the end user's environment; software which coordinates resources and can be extended from servers to storage, license management and networks from EUTM No 4 609 384) since they all consist of different types of software. These goods are, therefore, identical.

The contested computer e-commerce software solutions to allow users to perform electronic business transactions via a global computer network consists of software allowing users to perform certain actions, in particular electronic business transactions. The opponent´s goods in Class 9 covers Software which supports a wide spectrum of business applications being run across a virtualized infrastructure and which can be configured according to user defined business policies, which software can support most application types either directly or through application programming interfaces which is also related to business applications. These goods overlap, and are, therefore, identical.

The contested apparatus for recording, transmission or reproduction of sound or images; calculating machines, data processing equipment and computers are similar to the opponent´s goods in Class 9 (i.e. different types of software), to the extent that they can be pieces of hardware for use with software, coincide in distribution channels and points of sale, can be directed at the same consumers, and are complementary, as data processing equipment and computers are necessary to run software. Furthermore, they are likely to come from the same kinds of companies.

The contested magnetic data carriers, recording discs are similar to a low degree to the opponent´s goods in Class 9 (i.e. different types of software). These goods can come from the same producer and are complementary.

The contested 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; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, fire-extinguishing apparatus are dissimilar to the opponent´s goods and services, for the following reasons.

The goods of the opponent in Class 9 consist of different kinds of software. The services in Class 42 of the opponent consist of support services for systems management software and maintenance, support and consulting services related to different kinds of software.

Therefore, as stated above, these contested goods are dissimilar to the opponent´s goods and services for differing in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers and are not likely to come from the same kinds of companies.

Contested services in Class 35 

The contested advertising; business management; business administration; office functions; advice for consumers, business management and organization consultancy, business management assistance, commercial or industrial management assistance, all related to the conducting of business for computer e-commerce software solutions consist mainly of services rendered by persons or organizations, principally with the object of helping in the working or management of a commercial undertaking, or with the purpose of helping in the management of the business affairs or commercial functions of an industrial or commercial enterprise or auctioneering or renting vending machines.

According to the definitions of the opponent´s goods and services detailed above, the contested services in Class 35 are dissimilar to the opponent´s goods and services for differing in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers and are not likely to come from the same kinds of companies.

Contested services in Class 42 

The services in Class 42 of the opponent consist of support services for systems management software from EUTM No 5 474 218 and maintenance, support and consulting services related to different kinds of software from EUTM No 4 609 384.

The contested technological services and research and design relating thereto include, as a broad category, the opponent´s EUTM No 4 609 384 services in Class 42 (i.e. maintenance, support and consulting services related to different kinds of software). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Furthermore, the contested design and development of computer hardware and software; computer consulting services in the field of design, implementation and use of computer e-commerce software systems for others; providing computer ecommerce software solutions to allow users to perform electronic business transactions in the field of ecommerce overlap with the opponent´s EUTM No 5 474 218 and EUTM No 4 609 384 services in Class 42 (i.e. support services for systems management software and maintenance, support and consulting services related to different kinds of software). Therefore, these services are identical.

Lastly, according to the definitions of the opponent´s goods and services described above, the contested industrial analysis and research services are dissimilar to the opponent´s goods and services, for differing in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are not directed at the same consumers and are not likely to come from the same kinds of companies.

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 are directed at both, the general public (e.g. consumers purchasing computers), and at professionals and business customers with specific professional knowledge or expertise (e.g. purchasing business related software goods and services)

Their degree of attention during the purchase of the goods and services involved will vary from average to higher than average, depending on their characteristics.

For instance, a high price of the goods and services, the fact that they constitute infrequent purchases, or the fact that they are highly specialised goods or services will lead consumers to paying a higher than average level of attention during the purchase.

3. The signs

EUTM No 5 474 218: PLATFORM EUTM No 1 485 853: PLATFORM COMPUTING EUTM No 4 609 384: PLATFORM ENTERPRISE GRID ORCHESTRATOR	GO PLATFORM
Earlier trade marks	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 signs in questions are all word marks and are shown above.

The signs coincide visually in the word “PLATFORM”. The marks differ in their other words namely “COMPUTING” and “ENTERPRISE GRID ORCHESTRATOR” from two of the earlier marks and “GO” in the contested sign.

Regarding the conceptual coincidences between the marks, the concepts of the words forming the marks are the following.

The word “PLATFORM”, present in all the signs, means, inter alia, “a standard for the hardware of a computer system, determining what kinds of software it can run” (Oxford Dictionary), in English. This concept is frequently used in relation to hardware or software-related goods and services. 

The word “PLATFORM” is understood in the relevant territory, either because it is used as such (e.g. English), because consumers in that territory have enough knowledge of English as to understand its English meaning, or because it is very close to the equivalent terms in their respective languages (e.g. the word “plataforma” is used in Spanish and Portuguese, the term “platforma” is used in Czech, Croatian, Slovenian, Latvian and Lithuanian, as the equivalent terms for “platform”) and the identical term ´platform´ is used in Dutch.

The public purchasing hardware or software-related goods and services is formed by average consumers and by specialised consumers or customers, since software and hardware-related goods and services are nowadays directed at a broad range of consumers. These consumers will attribute to the word “PLATFORM” the abovementioned meaning, and will perceive it as having a low degree of distinctiveness in relation to software or hardware-related goods and services.

The word “COMPUTING”, present in one of the earlier marks, is an English word meaning, inter alia, “the action or practice of using computers, esp. as a professional or expert; the activity or operation of an electronic computer” (Oxford Dictionary Online, oed.com).

The word “COMPUTING” is understood in the relevant territory, either because it is used as such (e.g. English), because consumers in that territory have enough knowledge of English as to understand its English meaning, or because it is widely used in relation to the goods and services in question.

This term will also be understood by the relevant consumers and they will perceive it as non-distinctive in relation to software or hardware-related goods and services.

The term “ENTERPRISE GRID ORCHESTRATOR” is made up of English words that will be understood by the English-speaking part of the relevant public as follows:  “ENTERPRISE” being, inter alia, a term used in computing to refer to systems tailored to work in larger organisations or configurations, “GRID” meaning amongst others, a network of lines, especially two series of regularly spaced lines crossing one another at right angles, and “ORCHESTRATOR” referring figuratively to one who directs, manages, or coordinates. For this public, and as a whole, the “PLATFORM ENTERPRISE GRID ORCHESTRATOR” has no direct meaning although the “ORCHESTRATOR” will be understood as alluding figuratively to a person, organisation, a piece of software or a piece of hardware or a combination of aforementioned that is controlling the “PLATFORM ENTERPRISE GRID”, which in turn will allude to the idea of some form of large-scale IT system arranged in a network.

For the non-English speakers whilst some of the elements will be understood (for example “PLATFORM”) not all of them will be understood and it is unlikely that many non-English speakers will be able to understand the allusions referred to above, and as a whole this trade mark will have no clear meaning for this part of the public.

The word “GO” of the contested sign is used in English to refer to the action of traveling or moving from one place to another (as a verb) or meaning the intention or attempt to do something or perform an action (as a noun). This term will be understood by the English-speaking part of the relevant public, and those consumers with at least some basic English knowledge. However, a part of the relevant public will perceive it as meaningless.

As a consequence, for the goods and services found to be identical or similar (to various degrees), which are all related to software and/or hardware, the distinctive elements in the contested sign is “GO” or “ENTERPRISE GRID ORCHESTRATOR” in one of the earlier marks, and more attention will be paid to them than to the terms “PLATFORM” (distinctive to a low degree) and “COMPUTING” (non-distinctive).

Visually, the signs coincide in the word “PLATFORM” present in all of them, although located in different positions; first (or only) position in the earlier marks, last in the contested sign. They also differ in their other words/verbal elements, namely “COMPUTING” and “ENTERPRISE GRID ORCHESTRATOR” in two of the earlier marks and “GO” in the contested sign.

The first parts of the conflicting marks are different. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. It is, therefore, relevant that the marks differ in their beginnings.

When related to the goods and services found identical and similar to various degrees, “PLATFORM” is perceived as having a low degree of distinctiveness and “COMPUTING” is perceived as non-distinctive, according to the reasoning above.

For the goods and services found identical and similar to various degrees, “PLATFORM”, is not a significant visual coincidence between the marks, since the attention of consumers is focused on the distinctive element “GO” in the contested sign in order to differentiate the marks. In relation to those goods and services, and in line with the above, the signs are visually similar to a low degree, despite the coincidence of the word “PLATFORM”.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word “PLATFORM”. The marks differ in their other words/verbal elements, namely “COMPUTING” and “ENTERPRISE GRID ORCHESTRATOR” in two of the earlier marks and “GO” in the contested sign, and also in the order in which their coinciding parts are pronounced (i.e. with “PLATFORM” pronounced in the first (or only) place in the earlier marks and in the second position in the contested mark).

For the goods and services found identical and similar to various degrees the word “PLATFORM” is distinctive to a low degree and “COMPUTING” is non-distinctive, as explained above, and, therefore, consumers are likely to refer to the marks by pronouncing where possible the other words/verbal elements. For these goods and services, the word “PLATFORM” does not constitute a significant aural coincidence between the marks, and it can be stated that the marks are at best aurally similar to a low degree for coinciding in the sound of a lowly distinctive word.

Conceptually, the public in the relevant territory will be aware of the semantic content present in the signs as explained above. The signs will be conceptually similar as far as the shared word “PLATFORM” is concerned. However, due to its low distinctive character this will have a limited impact on the assessment of the likelihood of confusion.

The signs differ in the other more distinctive elements, namely “GO” in the contested sign and “ENTERPRISE GRID ORCHESTRATOR” in one of the earlier marks. If these words are understood, for example as is the case for English speakers, then they form a conceptual difference between the signs. If, however none of these words are understood then the signs are conceptually similar in so far as coinciding in “PLATFORM” although this word has been found to be distinctive only to a low degree. This is also true for the earlier mark “PLATFORM COMPUTING” where “COMPUTING” has been found non-distinctive.

As the signs have been found similar in at least one of the comparisons, the examination will continue.

4. Distinctiveness of the earlier marks

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 claimed that the earlier trade marks enjoy enhanced distinctiveness, but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Bearing in mind what has been said above in section c), the earlier marks EUTM No 5 474 218 and EUTM No 1 485 853 have a minimum degree of distinctiveness.

However, the earlier mark EUTM No 4 609 384, 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, despite the presence of one element that is only distinctive to a low degree and the allusions that are made as a whole to a part of the public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services have been found to be partially identical, partially similar to various degrees and partially dissimilar. The signs share the word “PLATFORM”, albeit in different positions. However, this word has been found to be only distinctive to a low degree for all the goods and services which have been found identical or similar to various degrees and which are all related to IT or computing fields.

Therefore, taking into account the reasoning in the above sections, the coincidences between the marks in the word “PLATFORM” have much less weight in determining the degree of similarity of the signs.

Indeed, consumers will readily overlook this element and instead fix their attention on more distinctive elements within the signs. Furthermore, even for the earlier mark EUTM No 5 474 218, which consists only of the word “PLATFORM”, and which arguably is the opponent’s best case for a likelihood of confusion, it has to be remembered that it has been found to have as a whole a minimum degree of distinctiveness (see section d) above). Consequently, as the relevant consumers will perceive the word/verbal element “GO” in the contested side to be the most distinctive element in the contested sign and that the minimum degree of distinctiveness present in the earlier mark as a whole is insufficient to overcome the presence of the distinctive word/verbal element “GO” which enables the consumers to safely distinguish between the signs. For the other earlier marks this is also the case due to the presence of other words/verbal elements which are either more distinctive or at least sufficiently different to allow consumers to distinguish between them. The same is also true for the earlier mark No 1 485 853 “PLATFORM COMPUTING” where “COMPUTING” has been found non-distinctive.

Therefore, according to the reasoning in the previous sections, the coincidences between the marks are not enough to counteract their differences, and that these differences are sufficient to exclude any likelihood of confusion. Therefore, there is no likelihood of confusion in the relevant public in relation to the goods and services found to be identical or similar to various degrees.

Regarding the goods and services found to be 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.

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

Chantal VAN RIEL

Ric WASLEY

Richard BIANCHI

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.