ION | Decision 2344664 - TATA CONSULTANCY SERVICES LIMITED v. ION TRADING UK LIMITED
Date Published: Oct 1, 2017
OPPOSITION No B 2 344 664
Tata Consultancy Services Limited, Nirmal Building, 9th Floor, Nariman Point, Mumbai, Maharashtra 400 021, India (opponent), represented by GLP S.R.L. (sede di Milano), Via L. Manara, 13, 20122 Milano, Italy (professional representative)
a g a i n s t
Ion Trading UK Limited, 26th floor, 30 St. Mary Axe, London EC3A 8EP, United Kingdom (applicant), represented by Charles Russell Speechlys LLP, 5 Fleet Place, London EC4M 7RD, United Kingdom (professional representative).
On 25/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 344 664 is partially upheld, namely for the following contested goods and services:
Class 9: Electronic publications.
Class 35: Business management; business administration; office functions; business accounting services; administrative support services; regulatory compliance; providing services to other organisations to allow them to optimise business, financial and trading performance; providing backoffice functions; support services for online trading and e-commerce; data and business compilation services.
Class 41: Training, education and consultancy including computer training and consultancy in relation to computer and online training.
2. European Union trade mark application No 12 422 961 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 all the goods and services of European Union trade mark application No 12 422 961. The opposition is based on, inter alia, European Union trade mark application No 10 150 266. The opponent invoked Article 8(1)(a) and (b) EUTMR.
DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(a) and (b) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.
Pursuant to 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 European Union trade mark application No 10 150 266.
- The goods and services
The opposition was based on all the goods and services of the opponent’s European Union trade mark application No 10 150 266, namely Classes 9, 16, 35, 38 and 42.
On 01/10/2015, the opponent’s European Union trade mark application No 10 150 266 was rejected in case No B 1 944 084, on relative grounds, for all the goods and services in Classes 9, 38 and 42. The decision was appealed but the appeal was dismissed in case R 2400/2015-4 of 10/06/2016. The decision is now final and therefore, the goods and services on which the opposition is based are the following:
Class 16: Printed matter; stationery; photographs; computer programs printed on paper; computer printouts; printed operating instructions; manuals; brochures; instructional and teaching materials; books and publications; cards; paper and articles made of paper; stationery and office requisites (except furniture); graphic reproductions; index cards and index card holders; all relating to information and communication technology and cloud computing.
Class 35: Business consultancy; commercial, industrial, business enterprise development and resource planning, management assistance and consultancy thereof; automated, computer or computer software-aided management services; work or operational (non-technical) management consultancy; business process outsourcing and consultancy thereof; personnel recruitment and management; public relations; secretarial service; compilation of information into computer databases; processing of data via the internet; outsourcing services for computer services; business information services; all relating to information and communication technology and cloud computing.
The applicant requested a limitation of the claimed goods and services in Classes 9 and 42, which was accepted by the Office. On 19/02/2015 the opponent was duly informed. The relevant contested goods and services (after limitation) are therefore the following:
Class 9: Computer software; computer programmes; apparatus and instruments for recording, transmission or reproduction of sound, data and/or images; magnetic tapes; magnetic discs; magnetic data carriers; CD-ROMs; electronic publications.
Class 35: Business management; business administration; office functions; business accounting services; administrative support services; regulatory compliance; providing services to other organisations to allow them to optimise business, financial and trading performance; providing backoffice functions; support services for online trading and e-commerce; data and business compilation services.
Class 36: Financial, monetary, insurance and banking services; treasury management services; preparing financial reports; Risk management consultancy.
Class 38: Providing access to computer networks and communications networks, including providing access to computer networks and communications networks for the transfer and dissemination of financial information; providing access to communications networks which allow real-time interaction between users; providing technical infrastructure and network including optical fibre network to allow on-line transactions.
Class 41: Training, education and consultancy including computer training and consultancy in relation to computer and online training.
Class 42: Computer services including data storage and data bank services relating to electronic trading, pricing, risk management and accounting of trades; computer and technical support services relating to electronic trading, pricing, risk management and accounting of trades; computer software design and development; customising computer software; computer software advisory and consultancy services.
The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and 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 (the ‘Canon’ criteria).
Contested goods in Class 9
The contested electronic publications are similar to the opponent’s books and publications; all relating to information and communication technology and cloud computing in Class 16 because they can be produced and manufactured by the same companies, share the same purpose and are addressed at the same relevant public. Furthermore, they are in competition.
The Opposition Division does not consider that the contested goods computer software; computer programmes; apparatus and instruments for recording, transmission or reproduction of sound, data and/or images; magnetic tapes; magnetic discs; magnetic data carriers; CD-ROMs and the opponent’s goods in Class 16 are usually marketed by the same undertakings nor that they have the same purpose. These goods do not have the same nature. Furthermore, they do not share the same usual commercial origin. Moreover, magnetic tapes; magnetic discs; magnetic data carriers; CD-ROMs are considered to be blank. They cannot be found to be similar to the content they could contain. There is no similarity between compact discs and the opponent’s goods in Class 16, inter alia photographs; relating to information and communication technology and cloud computing, merely on the basis that the latter goods can be stored or saved onto data media, as these are merely ancillary goods.
By their nature, goods are generally dissimilar to services and this is because a service is always an intangible asset. When it comes to the comparison of the goods in Class 9 and the link with the opponent’s services in Class 35, similarity can be found when it is common in the relevant market sector for the manufacturer of the goods to also provide such services. However, the contested goods in Class 9 computer software; computer programmes; apparatus and instruments for recording, transmission or reproduction of sound, data and/or images; magnetic tapes; magnetic discs; magnetic data carriers; CD-ROMs have no link with the opponent’s services in Class 35. The contested goods are even further removed from the remaining opponent’s services in Class 35 in terms of the Canon criteria defined above, namely nature, purpose, distribution channels, usual origin. Further, they are neither in competition nor complementary. Therefore, they are dissimilar.
Contested services in Class 35
The contested business management; business accounting include, as broader categories, the opponent’s business consultancy; relating to information and communication technology and cloud computing given that the latter is inherent to the contested services and that these have not been limited in any way. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested business administration; administrative support services; support services for online trading and e-commerce overlap with the opponent’s commercial, industrial, business enterprise development and resource planning, management assistance and consultancy thereof, all relating to information and communication technology and cloud computing. Therefore, they are identical.
The contested office functions include, as a broader category, the opponent’s secretarial service; relating to information and communication technology and cloud computing. 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 regulatory compliance is the adherence of an organization to regulations, guidelines and/or standards relevant to its business. They overlap with the opponent’s commercial, industrial, business enterprise development and resource planning, management assistance and consultancy thereof; all relating to information and communication technology and cloud computing. Consequently, they are identical.
The contested providing services to other organisations to allow them to optimise business, financial and trading performance includes as a broader category the opponent’s business consultancy; relating to information and communication technology and cloud computing. 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 backoffice functions are those related to the part of a business company that is concerned with running the company and that does not deal directly with customers or the public (information extracted from Cambridge Dictionary on 11/04/2017 at http://dictionary.cambridge.org/dictionary/english/back-office). Thus, the contested providing backoffice functions includes, as a broader category, the opponent’s compilation of information into computer databases; relating to information and communication technology and cloud computing. 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 data and business compilation services overlap with the opponent’s compilation of information into computer databases; relating to information and communication technology and cloud computing. Therefore, they are identical.
Contested services in Class 36
The contested financial, monetary, insurance and banking services; treasury management services; preparing financial reports; risk management consultancy are services offered usually by financial institutions such as banks, or highly skilled professionals. These services do not coincide in nature, purpose or method of use with any of the goods in Class 16 or services in Class 35 of the opponent. They have different origins, distribution channels and consumers. They are neither in competition nor are they complementary. Further the opponent did not provide any arguments or evidence to shed any light as to why there would be similarity. Therefore, they are dissimilar.
Contested services in Class 38
The contested providing access to computer networks and communications networks, including providing access to computer networks and communications networks for the transfer and dissemination of financial information; providing access to communications networks which allow real-time interaction between users; providing technical infrastructure and network including optical fibre network to allow on-line transactions are essentially telecommunications services, which are services that allow people to communicate with one another by remote means. Although these services might be used when executing the tasks related to the opponent’s services in Class 35, they do not have a similar nature as the opponent’s services. It is very unlikely that companies which provide, inter alia, business consultancy; management assistance or secretarial service would also provide telecommunication services and vice versa. The services have a different nature, purpose and methods of use. They have different origins and distribution channels. The same reasoning can be applied to the opponent’s remaining goods in Class 16. Therefore, the contested goods in Class 38 are dissimilar to all the opponent’s goods and services in Classes 16 and 35.
Contested services in Class 41
The contested training, education and consultancy including computer training and consultancy in relation to computer and online training are similar to the opponent’s goods in Class 16 printed matter; relating to information and communication technology and cloud computing. This is because in order to supply training, education and consultancy services, it is helpful and usual to use printed matter. Thus, they are complementary and generally share the same public and distribution channels.
Contested services in Class 42
The contested services in Class 42 comprise, inter alia, services related to the process of designing and updating programs, routines, and symbolic languages. They are dissimilar to the opponent’s services included in Class 35 since they have a different nature and purpose, they are not distributed through the same channels and they are not addressed to the same relevant public. Moreover, these goods and services are not in competition and they are not manufactured and/or provided by the same undertakings. These contested services are even further removed from the remaining opponent’s goods in Class 16 in terms of the Canon criteria, namely nature, purpose, distribution channels, usual origin. Further, they are neither in competition nor complementary. Consequently, the contested services in Class 42 are dissimilar to all the opponent’s goods and services.
- The signs
ION | ION |
Earlier trade mark | Contested sign |
The signs are identical.
- Global assessment, other arguments and conclusion
The signs are identical and, contrary to the applicant’s argument, some of the contested services, namely business management; business administration; office functions; business accounting services; administrative support services; regulatory compliance; providing services to other organisations to allow them to optimise business, financial and trading performance; providing backoffice functions; support services for online trading and e-commerce; data and business compilation services are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these services.
Furthermore, the contested goods and services electronic publications; training, education and consultancy including computer training and consultancy in relation to computer and online training were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods and services.
It follows from the above that the contested trade mark must be rejected for the aforementioned goods and services. The rest of the contested goods and services, contrary to the opponent’s view, are dissimilar. Further, as noted previously, the opponent failed to adduce any arguments or evidence that would explain why there would be any similarity. 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 and services cannot be successful.
The opponent has also based its opposition on the following earlier trade mark:
- European Union trade mark application No 10 150 498 for the figurative mark .
This earlier right is less similar to the contested mark. This is because it contains an evident different typeface and further figurative elements such as the vertical blue line inserted in the upper part of the letter ‘O’ and the thick blue line underlining the verbal element ‘ION’, which are not present in the contested trade mark. Moreover, it covers the same goods and services as the earlier trade mark that has been compared. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.
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
Alexandra APOSTOLAKIS | Carlos MATEO PÉREZ | Vanessa PAGE |
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.