my cloud INFRASTRUCTURE | Decision 2570326 - Western Digital Technologies, Inc. v. NXTO EXPANSION
Date Published: Apr 17, 2018
OPPOSITION DIVISION
OPPOSITION No B 2 570 326
Western Digital Technologies, Inc., 3355 Michelson Drive, Suite 100, Irvine, CA
92612, United States of America (opponent), represented by Carpmaels & Ransford
LLP, One Southampton Row, London, City of London WC1B 5HA, United Kingdom
(professional representative)
a g a i n s t
NXO Expansion, 30 Cours Albert 1er, 75008 Paris, France (applicant), represented
by Marchais Associes, 4, avenue Hoche, 75008 Paris, France (professional
representative).
On 02/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 570 326 is upheld for all the contested services.
2. European Union trade mark application No 13 701 883 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against all the services of European Union trade
mark application No 13 701 883 . Since European Union trade
mark application No 11 770 369 ‘MY CLOUD’, on which the opposition was initially
also based, has meanwhile been withdrawn, the opposition is at this stage only
based on European Union trade mark registration No 6 349 229 ‘MY CLOUD’. 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
Decision on Opposition No B 2 570 326 page: 2 of 6
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.
a) The services
The opposition is based on, inter alia, the following services:
Class 38: Telecommunications, communications, satellite and digital
communications services; telecommunication services for the provision
and down-loading of mobile telephone ring tones and of television, radio,
film, video and audio material; networking services; internet service
provider services; provision of communication services enabling
commerce to be conducted over networks and the Internet; television,
satellite, digital and radio broadcasting, transmission and diffusion
services; rental of telecommunications, communications, digital and
satellite communications apparatus and instruments; advice, information
and consultancy services relating to all of the aforesaid services.
The contested services are the following:
Class 37: Installation and maintenance of telecommunication and computer
equipment and networks.
Class 38: Telecommunication services; consultancy services within the data
communication area, the satellite communication area and the
telecommunication area.
Class 42: Computer and telecommunications network development, namely
designing computer networks and telecommunications network, for
others; Technical consultancy in the field of computer network and
telecommunications network development and maintenance.
An interpretation of the wording of the list of services is required to determine the
scope of protection of these services.
The term ‘namely’, used in the applicant’s list of services to show the relationship of
individual services to a broader category, is exclusive and restricts the scope of
protection only to the services specifically listed.
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 services in Class 37
The opponent’s telecommunications services in Class 38 are those that allow people
to communicate with one another by remote means. They have the same purpose as
the contested services installation and maintenance of telecommunication and
computer equipment and networks. These services can coincide in producer and
Decision on Opposition No B 2 570 326 page: 3 of 6
distribution channels. Furthermore they are complementary. Therefore, it is
considered that they are similar.
Contested services in Class 38
Telecommunication services are identically included in the specifications of both
marks, despite a slightly different wording.
The contested consultancy services within the data communication area, the satellite
communication area and the telecommunication area are included in the opponent’s
telecommunications. Therefore, they are identical.
Contested services in Class 42
The contested computer and telecommunications network development, namely
designing computer networks and telecommunications network, for others; technical
consultancy in the field of computer network and telecommunications network
development and maintenance and the opponent’s telecommunications services in
Class 38 have the same purpose, can coincide in producer and distribution channels,
and are complementary. Therefore, it is considered that they are similar.
b) 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 services found to be identical or similar are directed both at
the public at large and at business customers with specific professional knowledge or
expertise.
The degree of attention is expected to vary from average to above, depending on the
price, specialised nature, or terms and conditions of the services purchased.
c) The signs
MY CLOUD
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
Decision on Opposition No B 2 570 326 page: 4 of 6
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The earlier mark is the word mark ‘MY CLOUD’. In the case of word marks, it is the
word as such which is protected, and not its written form. Therefore, the use of upper
or lower case characters is immaterial.
The contested sign is a figurative mark composed of the verbal elements ‘my’, in
slightly stylised, handwritten-like typeface in white, ‘cloud’ and, thereunder, separated
by an underline and considerably smaller, ‘INFRASTRUCTURE’, both in standard
typeface in orange. All this is placed against a blue, cloud-shaped background.
The English expression ‘my cloud’, made up of a basic English word and an IT term,
and included in both marks, will be perceived at least by a significant part of the
relevant public throughout the European Union as referring to a somewhat
personalised or user related cloud computing, that is, a model of computer use in
which services stored on the internet are provided to users on a temporary basis
(https://www.collinsdictionary.com/dictionary/english/cloud-computing).
The figurative element in the shape of a cloud in the contested sign will be linked to
that same concept, merely underlining the meaning of the verbal element ‘cloud’.
The element ‘INFRASTRUCTURE’ of the contested sign will be associated by a
significant part of the relevant public, for instance, the English-, German-, Dutch-,
Spanish-, Italian- and French-speaking part of the public, with the basic structure of
an organization, system, etc
(https://www.collinsdictionary.com/dictionary/english/infrastructure), either because
the word exists as such (e.g. English and French), or because it is very close to the
equivalent word in the official language in the relevant territory (e.g. German:
Infrastruktur; Dutch: infrastructuur; Spanish: infraestructura; Italian: infrastruttura).
Bearing in mind that the relevant services belong to the fields of IT and
telecommunications, the expression ‘my cloud’ and the figurative element in the
shape of a cloud in the contested sign are weak for these services, yet more
distinctive than the element ‘INFRASTRUCTURE’ of the contested sign, which
merely refers to the particular type of services offered and is, therefore, non-
distinctive for the part of the public that understands it.
The earlier mark has no element that could be considered clearly more dominant
than other elements.
The element ‘INFRASTRUCTURE’ of the contested sign, owing to its small size and
position at the bottom of the sign, is overshadowed by the remaining elements of the
mark and plays only a secondary role in the overall impression of the sign.
When signs consist of both verbal and figurative components, in principle, the verbal
component of the sign usually has a stronger impact on the consumer than the
figurative component. This is because the public does not tend to analyse signs and
will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
Visually, the signs coincide in the verbal elements ‘my cloud’. They differ in the
figurative elements and the additional verbal element ‘INFRASTRUCTURE’ of the
contested sign, which is non-distinctive for a significant part of the relevant public.
Decision on Opposition No B 2 570 326 page: 5 of 6
Since the differing elements either play a secondary role in the overall impression of
the sign or have at least not such a strong impact, it is considered that the signs are
visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the phonemes ‛my
cloud’, present identically in both signs. The pronunciation differs in the phonemes
‛INFRASTRUCTURE’ of the contested mark, which have no counterparts in the
earlier sign. Considering, however, that this verbal element plays only a secondary
role within the sign and is, moreover, non-distinctive for a significant part of the
public, the signs are aurally at least highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As both signs will be perceived with the same
meaning by a significant part of the relevant public, and taking into account that the
figurative element does not add any semantic content, the only conceptual difference
being confined to a secondary and, for a significant part of the public, non-distinctive
element, the signs are conceptually at least highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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. Considering what has been stated above in section c) of this
decision, the distinctiveness of the earlier mark must be seen as below average for
all the services in question.
e) Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking
into account all the factors relevant to the circumstances of the case; this
appreciation depends on numerous elements and, in particular, on the degree of
recognition of the mark on the market, the association that the public might make
between the two marks and the degree of similarity between the signs and the goods
and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Taking into account the average degree of visual similarity and the high degree of
aural and conceptual similarity of the signs, even consumers with a higher degree of
attention may be led to believe that the identical and similar services at issue
originate from the same undertaking or at least economically linked undertakings,
since consumers could perceive the contested sign as a variation of the earlier mark,
identifying a particular range of services.
This applies notwithstanding the fact that the distinctiveness of the coinciding verbal
elements is below average, as they are the only elements of the earlier mark, and the
Decision on Opposition No B 2 570 326 page: 6 of 6
most distinctive verbal elements of the contested sign, whose figurative elements
merely underline their meaning, whereas its additional verbal element only plays a
secondary role within the overall impression of the sign. Moreover, for a significant
part of the relevant public, it is even less distinctive and cannot, therefore, be relied
upon to help consumers distinguish between the signs.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 6 349 229. It follows that the contested trade mark
must be rejected for all the contested services.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Irina SOTIROVA Natascha GALPERIN André Gerd Günther
BOSSE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.