Okolo | Decision 2645581 | Trademarkers LLC

Okolo | Decision 2645581

Date Published: Oct 1, 2017

OPPOSITION No B 2 645 581

Docapost DPS, 10/12 avenue Charles de Gaulle, 94220 Charenton Le Pont, France (opponent), represented by Marchais Associes, 4 avenue Hoche, 75008 Paris, France (professional representative)

a g a i n s t

Okolo SARL Luxembourg, 1 Boulevard de la Foire, 1528 Luxembourg, Luxembourg (applicant), represented by Seitz Rechtsanwälte Steuerberater, Aachener Str. 621, 50933 Köln, Germany (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 645 581 is upheld for all the contested goods and services, namely

Class 9: Recorded information and Data; Computer software; Information technology and audiovisual equipment; Computers; Computer hardware; Apparatus for collecting, recording, developing, transmission or reproduction of text, sound or images; Navigation, guidance, tracking, targeting and map making devices; Data processing apparatus.

Class 38: Telecommunications and communications services; Providing of access to telecommunications on electronic communications networks, computer databases, a global computer network and the internet; Providing of access to information on the internet and computer networks; Transmission, transfer and dissemination of information and data and audiovisual information on the internet and computer networks; Transmission, transfer and dissemination of audiovisual information and data on the internet and computer networks; Providing Internet access using software; Providing of telecommunications connections between computer users for the purposes of data exchange; Email services; Information and consultancy in the field of the aforesaid services.

Class 42: Design, development and updating of computer hardware and software; Computer programming; Design, Development and updating of computer systems; Providing computer software on data networks; Providing webspace (webhosting); Providing or rental of electronic memory space on the Internet; Electronic data processing; Electronic data back-up; Electronic data storage; Enabling of access to and providing of search, retrieval, indexing, linking and data organisation possibilities for the internet, computer networks and electronic databases; Server administration; sever hosting; Providing of a website with technology enabling users to upload, store, view and download digital photos and videos, and photo and video files; Information and consultancy in the field of the aforesaid services; Providing of platforms and portals on the internet and computer networks.

2. European Union trade mark application No 14 380 679 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 380 679, namely against some of the goods in Class 9 and all the services in Classes 38 and 42. The opposition is based on European Union trade mark registration No 13 082 763. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In accordance with Article 41 EUTMR, the notice of opposition must be submitted within a period of three months following the publication of the European Union trade mark application.

By indicating the goods and services against which the opposition is directed in accordance with Rule 15(3)(a) EUTMIR the opponent determines the actual scope of the opposition which subsequently may not be extended (24/08/2016, R 1157/2015-5, PlanVet / PlantaVet et al., § 25-26).

The contested trade mark application was published on 27/10/2015. In the notice of opposition filed on 26/01/2016, it was clearly indicated that the opposition was directed against some of the goods and services, namely some of the goods in Class 9 and all the services in Classes 38 and 42.

In its submission of 31/05/2016, the opponent indicated that its opposition was directed against some the goods and services of the contested European Union trade mark application, namely against all of the goods and services in Classes 9, 38 and 42.

However, since the opponent made reference to all of the goods in Class 9 only in its additional facts and arguments presented to substantiate the opposition, which were filed after the three-month period given for filing an opposition and determine its scope, the indication of these additional goods in Class 9 (namely optical equipment and apparatus; photographic apparatus and instruments; surveying apparatus and instruments; parts and accessories for all the aforesaid goods, included in this class) must be considered an inadmissible extension of the scope of the opposition and cannot, therefore, be taken into account.

Consequently, the Office deems the opposition to have been filed against some of the goods in Class 9 and all the services in Classes 38 and 42.

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: Computer software and software packages for managing the storage and archiving of electronic and computer data, equipment for recording, inputting, storage, transmission, reading, reproduction and/or processing of electronic and computer data; Application software for pocket terminals (smartphones).

Class 38: Communications by computer terminals; email services; Transmission of digital documents via a global computer network, or via other telecommunications means (SMS, fax, etc.); Transmission of information by data transmission; Telecommunication services; Telecommunications provided via the internet network, telematic, telephone and computer communications via intranet networks and the internet; Computerised document exchange, secure dissemination and transmission of documents, files and data via the Internet; Providing of access to data for remote viewing via the internet; Rental of access time to a data base server.

Class 42: Computer programming; Development, design, installation and updating of computer software; Development, design and updating of computer software for computer and electronic data storage; Maintenance of computer software, in particular computer software for storage of electronic mail and electronic data, systems and computer servers; Advice, professional consultancy, expert opinions and assistance in the field of computing; Electronic storage of computer and electronic data; Computerised and electronic encoding of data, documents and files; Download services; Storage of data, documents, files and archives on the internet network.

The contested goods and services are the following:

As a preliminary remark, an interpretation of the wording of the applicant’s list of goods in Class 42 is required to determine the scope of protection of these services. This is because the Opposition Division has found a discrepancy between the translation into English of the specification of services and the original version in the first language of the EUTM application (German). In this regard, it should be noted that the wording device, development and updating of computer systems should read design, development and updating of computer systems as the term ‘Entwurf’ in the original version corresponds to the English verb ‘design’ and not to the noun ‘device’.

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

Computer software is identically contained in both lists of goods.

The contested information technology and audiovisual equipment; computers; computer hardware; data processing apparatus include, as broader categories, or overlap with, the opponent’s equipment for recording, inputting, storage, transmission, reading, reproduction and/or processing of electronic and computer data. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus for collecting, recording, developing, transmission or reproduction of text, sound or images are included in the broad category of the opponent’s equipment for recording, inputting, storage, transmission, reading, reproduction and/or processing of electronic and computer data. Therefore, they are identical.

The contested recorded information and data consist of different types of electronic data, usually stored in or managed by computers. They need software in order to be viewed, stored, processed, updated, read, etc. These contested goods are similar to the opponent’s software packages for managing the storage and archiving of electronic and computer data, since they are complementary. In addition, they may target the same end users, have the same distribution channels and are likely to come from the same kinds of companies.

The contested navigation, guidance, tracking, targeting and map making devices are goods used for determining geographical location and/or for guiding a vehicle, person or object, or for determining parameters of an area and compiling and drawing a diagrammatic representation of its surface or a part thereof. They are electronic devices and, therefore, they have a similar nature to the opponent’s equipment for recording, inputting, storage, transmission, reading, reproduction and/or processing of electronic and computer data, which are electronic devices capable of receiving information (data) in a particular form and of performing a sequence of operations in accordance with a predetermined but variable set of procedural instructions (program) to produce a result in the form of information or signals. These goods may be manufactured by the same specialist companies in the field of electronics, and can be found in the same retail outlets. Furthermore, they may target the same users. Therefore, they are considered similar.

Contested services in Class 38

Telecommunication services; providing of access to information on the internet and computer networks; transmission, transfer and dissemination of information and data and audiovisual information on the internet and computer networks; transmission, transfer and dissemination of audiovisual information and data on the internet and computer networks; email services are identically contained in both lists of services (including synonyms).

The contested communications services include, as a broader category, the opponent’s communications by computer terminals. 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 access to telecommunications on electronic communications networks, computer databases, a global computer network and the internet; providing Internet access using software; providing of telecommunications connections between computer users for the purposes of data exchange are included in the broad category of the opponent’s telecommunication services. Therefore, they are identical.

The contested information and consultancy in the field of the aforesaid services are similar to the opponent’s telecommunication services. The contested services include the provision of information and advice regarding the opponent’s services. In this regard, it is common in the market for companies providing telecommunications services to also provide information related thereto and they are often complementary. Moreover, these services can target the same public.

Contested services in Class 42

Design, development and updating of computer software; computer programming; electronic data storage are identically contained in both lists of services (including synonyms).

Computer systems consist of hardware and software that process data. In this regard, the contested design, development and updating of computer systems overlap with the opponent’s design, development and updating of computer 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.

The contested providing computer software on data networks is included in the broad category of the opponent’s computer programming. Therefore, they are identical.

The contested information and consultancy in the field of the aforesaid services include, as a broader category, the opponent’s advice, professional consultancy, expert opinions and assistance in the field of 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 design, development and updating of computer hardware and the opponent’s design, development and updating of computer software are services offered by the same companies in the field of information technology. Furthermore, they target the same public and have the same distribution channels. Moreover, they are complementary to each other. Therefore, these services are similar.

The contested providing webspace (webhosting); providing or rental of electronic memory space on the Internet; electronic data processing; electronic data back-up; enabling of access to and providing of search, retrieval, indexing, linking and data organisation possibilities for the internet, computer networks and electronic databases; server administration; sever hosting; providing of a website with technology enabling users to upload, store, view and download digital photos and videos, and photo and video files; providing of platforms and portals on the internet and computer networks are all IT-related services. Consequently, although these services are not purely computer programming, they are closely related to the opponent’s services. They may target the same consumers, may be provided by the same undertakings (IT specialists) and are likely to be distributed through the same channels. Therefore, these services are similar.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high depending on the nature and specialisation of the specific goods and services.

The signs

OKORO

Okolo

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 contested mark is not meaningful in certain territories, for example, in those countries where Bulgarian, Croatian, Czech, Polish and Slovak is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on, for example, the Spanish, Italian and Portuguese-speaking part of the public.

The signs have no meaning for the relevant public and are, therefore, distinctive.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many similar trade marks across Europe. In support of its argument the applicant refers to several trade mark registrations in Germany and EUIPO.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks with a similar structure, namely of vowels, to the earlier mark. Under these circumstances, the applicant’s claim must be set aside.

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.

Visually, the signs coincide in the sequence of letters ‘OKO*O’. Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether the conflicting word marks are depicted in lower or upper case letters or in a combination thereof. The signs differ only in their fourth letters, namely ‘R’ in the earlier mark and ‘L’ in the contested sign. Consequently, the signs coincide in their first three letters and in their last one, having, moreover, an identical length of five letters.

Therefore, the signs are visually highly similar.

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 letters ‛oko*o’, present identically in both signs. The signs have the same number of syllables, coinciding in the first two (/o-ko-ro/ vs /o-ko-lo/), and the same vowel structure (‘o-o-o’) and, therefore, their rhythm and intonation is highly similar. The pronunciation differs in the sound of the letters placed in their fourth position, namely ‛r’ of the earlier sign and ‘l’ of the contested mark. However, despite this minor difference, their last syllable is still similar as the difference in pronunciation of the penultimate consonants, ‘r’ and ‘l’, is not particularly striking and these are followed by the same last vowel ‘o’ (/ro/ vs /lo/).

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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).

It has been established in the previous sections of this decision that the contested goods and services are considered partly identical and partly similar to the opponent’s goods and services. They target both the public at large and professionals, with a degree of attention that will vary from average to high.

It has also been concluded that the signs are visually and aurally highly similar, whereas the conceptual aspect does not influence the assessment of the similarity of the signs.

Additionally, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Therefore, the Opposition Division considers that the only difference between the signs found in their penultimate letters is not sufficient to counterbalance the overall degree of similarity between them. Therefore, the relevant public, even with a higher than average level of attention, may believe that the identical or similar goods and services come from the same undertaking or, at least, economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish, Italian and Portuguese-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 082 763. It follows that the contested trade mark must be rejected for all the contested 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.

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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Lucinda CARNEY

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.

Okolo | Decision 2645581

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