Sherpa | Decision 2744434 - Sherpa Europe S.L. v. Jo De Baerdemaeker
Date Published: Sep 28, 2017
OPPOSITION No B 2 744 434
Sherpa Europe S.L., c/ Legazpi, 6, 48950 Erandio, Vizcaya, Spain (opponent), represented by Elzaburu S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Jo De Baerdemaeker, Gounodstraat 8/31, 2018 Antwerpen, Belgium (applicant),
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 744 434 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 385 073 for the word trade mark ‘Sherpa’. The opposition is based on European Union trade mark application No 14 926 265 . 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 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: Mobile device applications, phablets, tablets, wearables, smartwatches and other portable devices serving as personal digital assistants; Handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; MP3 and other digital format audio and video players; Hand held computers, personal digital assistants, electronic organizers, electronic notepads; Magnetic data carries; Telephones, mobile telephones, video telephones, cameras; Radio receivers; Radio transmitters; Camcorders; Computer hardware and software; Computer software and firmware, namely, operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; Character recognition software, Telephony management software, Software for mobile phones; Telephone-based information retrieval software and hardware; software for the redirection of messages; Games software; Prerecorded computer programs for personal information management; Database management software; Electronic mail programs and messaging programs; Database synchronization software; Computer programs for accessing, browsing and searching online databases; Computer hardware and software for providing integrated telephone communication with computerized global information networks; Parts and accessories for handheld and mobile digital electronic devices; Parts and accessories for mobile phones; Bags for mobile telephones; Cases adapted for mobile phones; Mobile telephone cases made of leather or imitation of leather; Mobile telephone covers made of cloth or textile materials; Batteries and cells; Rechargeable batteries; chargers; Chargers for electrical batteries; Ear phones; Stereo headphones; In-ear headphones; Stereo speakers; Loudspeakers; Audio speakers for home; Personal stereo speaker apparatus; Microphones; Car audio apparatus; Apparatus for connecting and charging portable and handheld digital electronic devices; User manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; Parts and fittings for all the aforesaid, Except apparatus and instruments for selecting television programmes and other programmes, expressly not including goods of all kinds for use with military vehicles and all-terrain vehicles (whether or not for military use) and goods of all kinds for military use.
Class 42: Scientific services; Industrial analysis and research services; Designing and development of computers; Multimedia and audio-visual software consulting services; Providing search engines for obtaining data via communications networks; Application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; Providing temporary use of on-line non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs; Providing on-line facilities, via a global computer network, to enable users to program the scheduling of audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs as they will be aired; Providing search engines for obtaining data on a global computer network; Operating search engines; Computer consulting and support services for scanning information into computer discs, All the aforesaid services in class 42 not relating to the providing of access (computer software) to brokerage platforms for performing and carrying out securities transactions and transactions with other negotiable financial instruments (other than the providing of internet access).
The contested services are the following:
Class 42: Design of typefaces.
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 services in Class 42
The contested design of typefaces refers to a very specific field of graphic design dedicated to the layout of letters (type) and in particular to the style, arrangement and appearance of the letters, numbers and symbols created during the process.
The opponent’s goods in class 9 refer mainly to IT related devices such as mobile device applications, phablets, tablets etc, and the related software and operating systems as well as user manuals in electronically, machine, computer readable form for use with, and sold as, a unit with the aforementioned goods and parts and fittings for these goods. The opponent’s services in class 42 are mainly related to scientific and industrial services as well as designing and development of computers, computer consulting, multimedia and audio-visual software consulting services and other kind of Internet related services.
The contested design of typefaces has no relevant points of contact with the opponent’s goods and services in classes 9 and 42. In particular, with respect to the opponent’s software in class 9, whereas it is true that the same kind of software can be used in the design of typeface, this does not imply that there is a complementarity between these goods and the typeface design service, as to lead consumers to think that the responsibility for the production of those goods or for the provision of this service lies with the same undertaking. In fact, nowadays consumers are used to the application of software in many fields of digital activity in order to simplify and speed up the related processes, as many activities, such as in graphic design, architecture, business and financial fields, are performed through the support of relevant software. However, it cannot be considered as a significant commonality since the software is only a support and not the object of these activities. In respect to the opponent’s services in class 42, it should be stressed that the contested design of typeface is carried out by graphic designers that arrange words, letters, numbers, and symbols and not by computer engineers and IT experts, which would be the expertise used to provide the opponent’s services. Therefore, the contested service and the opponent’s goods and services are dissimilar as they clearly have a different nature and purpose. They normally come from different manufacturers or providers and are distributed through different trade channels.
In its submissions of 29/07/2016, the opponent claims that ‘the contested service and the opponent’s goods and services are wholly complementary since they are customarily offered by competing companies through similar channels of distribution and marketing and target the same type of user’. Contrary to the opponent’s arguments the Opposition Division is of the opinion that it is not common for a company that provides the contested design of typeface to also offer the opponent’s goods and services. The contested service is provided by companies specialized in typography, which is a very specific field in design graphics and is neither complementary to nor in competition with the opponent’s services or goods. Moreover, as clearly explained above, the channels of distribution and marketing are also different. Therefore, the opponent’s arguments must be set aside.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Since the opposition is not successful it is not necessary to suspend the opposition proceedings until the earlier trademark application completes the registration process.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
María Belén IBARRA DE DIEGO | Angela DI BLASIO | Michele M. BENEDETTI-ALOISI |
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.