Pyynger | Decision 2805391

Date Published: Oct 1, 2017

OPPOSITION No B 2 805 391

Pinger, Inc., 97 S. 2nd Street, Suite 210, San Jose, California 95113, United States of America (opponent), represented by Jeffrey Parker and Company, The Grange, Hinderclay, Suffolk IP22 1HX, United Kingdom (professional representative)

a g a i n s t

Daniel Avigad, Hårdvallsgatan 14 LGH 1001, 11546 Stockholm, Sweden (applicant).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 805 391 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 745 995 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 745 995 for the word mark ‘Pyynger’. The opposition is based on European Union trade mark registration No 7 137 995 for the word mark ‘PINGER’. The opponent invoked Article 8(1)(b) and 8(5) 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:

Class 9: Computer software; communications software; downloadable electronic publications; instructional material relating to computers and software, all recorded magnetically, optically or electronically or being downloadable from a computer network; data, documents, information, video, sound, text and other media or multi-media, all being electronically recorded or downloadable from the Internet, extranets or other communications networks; computer hardware; mobile telephones, pagers and personal communications devices, global positioning satellite navigation devices; telecommunications devices; sound and/or video recording and playing devices; computer peripherals; cameras; portable digital electronic devices.

Class 38: Telecommunications; voice messaging services; transmission of information, including sound, data and images, via telephone or global computer information network; providing online bulletin boards, forums, blogs and chat rooms for transmission of messages among users of global computer and wireless networks; providing access to websites wherefrom users may download computer software; electronically transferring and disseminating computer software, providing online access to a computer software knowledge base; electronically sharing data on a network; transmission and dissemination of messages among users; electronic transmission/sending of news, information, mail, messages, information and data via computer networks, telecommunication networks and the Internet; computer aided transmission of messages and/or images; electronic mail; communication and broadcasting services; television, radio and mobile phone broadcasting and communication services; transmission of sound and/or pictures; information, consultancy and advisory services, all relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets.

Class 45: Online social networking services; online dating and introduction services; licensing of computer software and other intellectual property or proprietary materials; information, advisory and consultancy services relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets.

The contested goods and services are the following:

Class 9: Downloadable applications for use with mobile devices; application software for social networking services via internet; community software.

Class 35: Providing business information in the field of social media.

Class 38: Providing on-line chat rooms for social networking; chatroom services for social networking.

Class 41: Entertainment services in the nature of organizing social entertainment events.

Class 45: Dating services provided through social networking; online social networking services accessible by means of downloadable mobile applications; on-line social networking services; internet based dating, matchmaking and personal introduction services; internet based personal introduction services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, namely in Classes 38 and 45, indicates that the specific 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 (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 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.

Contested goods in Class 9

The opponent’s communications software in Class 9 is a type of software (not necessarily computer software) used to provide remote access to systems and to exchange files and messages in text, audio and/or video formats between different computers or users. Nowadays, this type of software often includes file transfer, chat, forum and instant messaging programs, as well as various communication applications, which are software designed to carry out a particular task, for instance making calls, sending messages, chatting or sharing various file categories within a large community.

It is thus obvious that the contested application software for social networking services via internet; community software, as well as downloadable applications for use with mobile devices, are included in, overlap to some extent with or include the opponent’s communication software. Since the Opposition Division cannot dissect ex officio these categories of software products, they are considered identical.

Contested services in Class 35

The contested providing business information in the field of social media is similar to the opponent’s online social networking services; information, advisory and consultancy services relating to the aforesaid, including such services provided online from a computer network or via the Internet or extranets in Class 45. Although in principle the contested business information services in Class 35 target a professional public, while the opponent’s services in Class 45 target the public at large, there is still a clear overlap in the relevant field in which both types of services are provided, namely information and consultancy about social media and social networking. It cannot then be ruled out that these services might have the same providers and, furthermore, the same distribution channels, for instance via the internet or a computer network.

Contested services in Class 38

The contested providing on-line chat rooms for social networking; chatroom services for social networking are identical to the opponent’s providing chat rooms for transmission of messages among users of global computer and wireless networks, as these services are essentially the same, albeit with slightly different wording.

Contested services in Class 41

The contested entertainment services in the nature of organizing social entertainment events are considered similar to the opponent’s online social networking services in Class 45. This is because social networking services may belong partly to the entertainment field and, as such, may be used to organise the contested social entertainment events. It cannot be ruled out that the providers and distribution channels of these services, as well as their relevant public might be the same.

Contested services in Class 45

On-line social networking services are identically contained in both lists of services.

The contested online social networking services accessible by means of downloadable mobile applications are included in the broad category of the opponent’s online social networking services. Therefore, they are identical.

The contested dating services provided through social networking; internet based dating, matchmaking and personal introduction services; internet based personal introduction services are identical to the opponent’s online dating and introduction services either because they overlap or because the contested services are included in the broad category of the opponent’s services.

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 found to be identical or similar are directed at the public at large, as well as at a professional public, insofar as the business services in Class 35 are concerned. Bearing in mind the nature of the goods and services in question, the degree of attention is considered average.

3. The signs

PINGER	Pyynger
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.

Both marks are word marks consisting of a single verbal element. Although the earlier mark is in upper case letters and the contested sign is in title case letters, this is considered an immaterial difference, since, in the case of word marks, the words as such are protected and not their written form.

It should be noted that the verbal elements in question may have different meanings and pronunciations for different parts of the public of the European Union. For example, the English-speaking public will pronounce the earlier mark as [pɪŋə], meaning ‘a device that makes a pinging sound, esp one that can be preset to ring at a particular time’, whereas the contested sign will be meaningless and the word ‘Pyynger’ may be pronounced [pɪŋə] or [pindzə]. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on a part of the public for which the verbal elements will be meaningless and the signs will be pronounced identically due to the identical pronunciation of the letters ‘I’ and ‘Y’ (and also ‘YY’). To simplify the assessment, the Opposition Division will therefore focus on the Bulgarian- and German-speaking parts of the public.

The elements ‘PINGER’ and ‘PYYNGER’ have no meaning for the relevant public and are, therefore, distinctive. As both marks are word marks, no dominant elements can be identified.

Visually and aurally, the signs coincide in the letters ‘P*(*)NGER’. They differ only in the letters ‘I’ in the earlier mark and ‘YY’ in the contested sign. As the signs coincide in most of their letters, and even bearing in mind the unusual letter combination ‘YY’ in the second position in the contested sign, they are considered visually similar to an average degree.

For the reasons explained above, namely the identical pronunciation of the letters ‘I’ and ‘Y’ (and also ‘YY’), the signs are considered aurally identical.

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.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The goods and services are identical or similar and the degree of attention of the relevant public is average.

Both signs are word marks consisting of one verbal element; they contain no more distinctive or dominant elements and have no meaning for the relevant public.

In the present case, in spite of the differences in the second (and third in the contested sign) letters of the verbal elements, a likelihood of confusion may still be found. As stated above, the signs will be pronounced identically and the visual differences are based only on the second (and third) letters in identical positions within the verbal elements. 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). Consequently, differences in one or two letters may be easily overlooked in the overall perception of the signs and, as the marks are meaningless for the relevant consumers, the Opposition Division does not consider the aforementioned differences sufficient for the relevant consumer to safely distinguish between the signs in a real market environment.

This similarity between the signs is reinforced by the identity or similarity between the goods and services, as concluded above in section b). Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between signs may be offset by a greater degree of similarity between the goods and services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian- and German-speaking parts of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for all the goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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, he 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

Volker MENSING

Manuela RUSEVA

Robert MULAC

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.