TAXIDEA | Decision 2719030 - CASEWARE INTERNATIONAL INC. v. MDDP Spółka z ograniczoną odpowiedzialnością AKADEMIA BIZNESU Spółka komandytowa
Date Published: Sep 28, 2017
OPPOSITION No B 2 719 030
Caseware International Inc., 469 King Street West, 2nd Floor, Toronto, Ontario M5V 1K4, Canada (opponent), represented by Urquhart-Dykes & Lord Llp, Churchill House, Churchill Way, Cardiff CF10 2HH, United Kingdom (professional representative)
a g a i n s t
MDDP Spółka z ograniczoną odpowiedzialnością Akademia Biznesu Spółka komandytowa, Aleja Jana Pawła II 25, 00-854 Warszawa, Poland (applicant), represented by Sulima Grabowska Sierzputowska, Biuro Patentów I Znaków Towarowych Sp. J., IO-1 Building, ul. Puławska 182, 02-670 Warsaw, Poland (professional representative).
On 17/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 719 030 is partially upheld, namely for the following contested goods and services:
Class 9: Mobile applications, Applications downloadable from the internet; Computer software and computer programs; Computer applications, software and programs relating to law, finance, accounting, book-keeping, taxation and auditing; Computer communication software enabling customers to access information relating to law, finance, accounting, book-keeping, taxation and auditing; Computer applications, software and programs relating to education and training in the field of law, finance, accounting, book-keeping, taxation and auditing; Computer applications, software and programs for creating, processing, transmitting, viewing, archiving and managing documents, financial documents, book-keeping documents and taxation documents; Computer applications, software and programs for creating, processing and managing databases relating to documentation, law, finance, accounting, book-keeping, taxation and auditing; Computer applications, software and programs allowing data search and the search and retrieval of information via a computer network; Computer applications, software and programs for processing and analysing market information; apps, Computer software and programs for handling financial transactions; Computer applications, software and programs designed to estimate costs, computer applications, software and programs for invoicing; Computer applications, software and programs for converting currency exchange rates; Electronic publications, downloadable electronic publications in the form of periodicals, books, manuals, prospectuses, bulletins and pamphlets relating to law, finance, accounting, book-keeping, taxation and auditing, instructional, educational and teaching material in electronic form in the field of law, finance, accounting, book-keeping, taxation and auditing.
Class 36: Creation and management of electronic systems for gathering, presentation, processing and storage of financial information.
Class 38: Computer-aided transmission of messages and images; Providing web portals, databases, and internet search engines relating to law, finance, accounting, book-keeping, taxation and auditing; Providing computer programs and applications via the internet for financial and tax settlements and document management, providing access to databases in the fields of law, finance, accounting, book-keeping, taxation and auditing; Providing databases, Providing user access to information on the Internet; Providing internet discussion forums and chatrooms for messaging, comments and multimedia content among users; Electronic interchange of data stored in databases accessible via telecommunications networks, electronic transmission of messages and data, electronic transmission of images, photographs, graphic images and illustrations via a computer network; Transmission and dissemination of information and data via computer networks, the internet, telephone and telecommunications networks; Computer transmission of information accessible via access codes or terminals; Electronic communication services for preparing financial information.
Class 41: Training relating to law, finance, accounting, book-keeping, taxation and auditing; Online training from a computer database or via the internet or extranets; Arranging and conducting of educational training, courses, workshops, seminars and conferences in the fields of law, administration, finance, accounting, book-keeping, taxation, auditing, invoicing and business management, arranging and conducting of training relating to computer application, software and program support in the fields of law, finance, accounting, book-keeping, taxation and auditing; Computerised training in career counselling; Instructional services; Publishing, publication of books, periodicals, magazines and texts, other than publicity texts, including online, and publication of information relating to law, finance, accounting, book-keeping, taxation and auditing; Providing of online electronic publications (not downloadable), publication of texts and printed matter, other than publicity texts, via databases or the internet.
Class 42: Design, preparation, writing, development, updating, installation, maintenance and servicing of computer programs and software, computer applications and databases, design, preparation, writing, development, updating, installation, maintenance and servicing of computer programs and software, computer applications and databases in the fields of law, finance, accounting, book-keeping, taxation and auditing; Design of computers and computer software for commercial analysis and reporting; Installation and customisation of computer software applications; Programming of database management software, programming of software for web portals, chatrooms, chat lines and internet forums, computer programming of systems for processing and transmitting data, programming of educational software; Creation, administration and maintenance of websites in the fields of law, finance, accounting, book-keeping, taxation and auditing; Providing use of software designed for the electronic presentation of information in the fields of law, finance, accounting, book-keeping, taxation and auditing; Management of electronic platforms used for financial and taxation settlements; consulting services and Consultancy relating to computer applications, computer programs, and computer database programs and Software, Advice and consultancy relating to information technology; Providing information in the field of information technology via websites; Rental of computer programs, software and applications; Providing temporary use of non-downloadable online software for database management, the importing and management of data, providing temporary use of non-downloadable software applications accessible via websites, providing temporary use of non-downloadable software enabling users to share multimedia content and comments; Cloud computing; Design and development of operating software for accessing and using a cloud computing network, Providing temporary use of online non-downloadable operating software for obtaining access to and use of cloud computing networks.
2. European Union trade mark application No 14 865 034 is rejected for all the above goods and services. It may proceed for the remaining 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 14 865 034. The opposition is based on, inter alia, European Union trade mark registration No 3 533 023. The opponent invoked Article 8(1)(a) and (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 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 registration No 3 533 023.
- The goods and services
The goods on which the opposition is based are the following:
Class 9: Computer software relating to auditing and statistical sampling.
Class 16: User manuals for computer software; all relating to auditing and statistical sampling.
The contested goods and services are the following:
Class 9: Mobile applications, Applications downloadable from the internet; Computer software and computer programs; Computer applications, software and programs relating to law, finance, accounting, book-keeping, taxation and auditing; Computer communication software enabling customers to access information relating to law, finance, accounting, book-keeping, taxation and auditing; Computer applications, software and programs relating to education and training in the field of law, finance, accounting, book-keeping, taxation and auditing; Computer applications, software and programs for creating, processing, transmitting, viewing, archiving and managing documents, financial documents, book-keeping documents and taxation documents; Computer applications, software and programs for creating, processing and managing databases relating to documentation, law, finance, accounting, book-keeping, taxation and auditing; Computer applications, software and programs allowing data search and the search and retrieval of information via a computer network; Computer applications, software and programs for processing and analysing market information; apps, Computer software and programs for handling financial transactions; Computer applications, software and programs designed to estimate costs, computer applications, software and programs for invoicing; Computer applications, software and programs for converting currency exchange rates; Electronic publications, downloadable electronic publications in the form of periodicals, books, manuals, prospectuses, bulletins and pamphlets relating to law, finance, accounting, book-keeping, taxation and auditing, instructional, educational and teaching material in electronic form in the field of law, finance, accounting, book-keeping, taxation and auditing.
Class 35: Book-keeping and accounting services, Accounting management and book-keeping; Auditing, Business auditing, Business auditing, Accountancy, book keeping and auditing; Tax preparation, setting of taxation rates; Billing services; Preparation of financial statements and statistics; Tax planning, economic and marketing forecasting and analysis; Business advice and consultancy, business organisation, management and administration consultancy, advice and consultancy relating to commercial transactions, advice and consultancy relating to book-keeping, accounting and auditing, advice and consultancy relating to tax preparation, tax consultancy, consultancy relating to market assessment and market reports; Business management and administration, Business administration, Administration (Business -) relating to statistical methods, Administration relating to business appraisal; Compilation and systemisation of information into computer databases, data search in computer files, compilation of information into computer databases, computerised file management, systemisation of information into computer databases; Computerised file management for businesses, updating and maintaining data in computer databases, creation and management of computer databases in the fields of documentation, accounting, book-keeping, taxation and auditing, computerised data processing, retrieval and processing of business data and information; Compilation and systemisation of information into computer databases, compilation and providing of statistical data relating to businesses; Compilation of business statistics and commercial information; Preparation of computerised accounting and book-keeping; Analysis of business data and information, analysis of business management systems, business investigations and marketing research, statistical analysis and reporting, business research and surveys, statistical business surveys, opinion polling; Information relating to book-keeping, accounting, taxation and auditing; Compilation and providing of business and commercial information; Gathering of information relating to business, business investigations and marketing research, gathering of information relating to book-keeping, accounting and auditing; Providing reports relating to accounting information; Creation services and Management of computer databases in the field of finance.
Class 36: Financial services and financial advice; Administration of financial affairs, Financial economic analysis; Financial transaction services; Financial reporting and analysis; Consultancy (financial -), Financial consultancy relating to settlements and taxation, tax returns consultancy; Consultancy relating to financial management, financial investment and financial planning, financial planning in the field of taxation, and tax planning (not relating to book-keeping); Financial information, Financial information provided via computer databases, electronic media, the internet, and financial information relating to currency exchange rates; Creation and management of electronic systems for gathering, presentation, processing and storage of financial information.
Class 38: Computer-aided transmission of messages and images; Providing web portals, databases, and internet search engines relating to law, finance, accounting, book-keeping, taxation and auditing; Providing computer programs and applications via the internet for financial and tax settlements and document management, providing access to databases in the fields of law, finance, accounting, book-keeping, taxation and auditing; Providing databases, Providing user access to information on the Internet; Providing internet discussion forums and chatrooms for messaging, comments and multimedia content among users; Electronic interchange of data stored in databases accessible via telecommunications networks, electronic transmission of messages and data, electronic transmission of images, photographs, graphic images and illustrations via a computer network; Transmission and dissemination of information and data via computer networks, the internet, telephone and telecommunications networks; Computer transmission of information accessible via access codes or terminals; Electronic communication services for preparing financial information.
Class 41: Training relating to law, finance, accounting, book-keeping, taxation and auditing; Online training from a computer database or via the internet or extranets; Arranging and conducting of educational training, courses, workshops, seminars and conferences in the fields of law, administration, finance, accounting, book-keeping, taxation, auditing, invoicing and business management, arranging and conducting of training relating to computer application, software and program support in the fields of law, finance, accounting, book-keeping, taxation and auditing; Computerised training in career counselling; Instructional services; Arranging and conducting of educational competitions; Publishing, publication of books, periodicals, magazines and texts, other than publicity texts, including online, and publication of information relating to law, finance, accounting, book-keeping, taxation and auditing; Providing of online electronic publications (not downloadable), publication of texts and printed matter, other than publicity texts, via databases or the internet; Library services relating to data stored and retrieved electronically, library services provided via computer databases containing information relating to law, finance, accounting, book-keeping, taxation and auditing.
Class 42: Design, preparation, writing, development, updating, installation, maintenance and servicing of computer programs and software, computer applications and databases, design, preparation, writing, development, updating, installation, maintenance and servicing of computer programs and software, computer applications and databases in the fields of law, finance, accounting, book-keeping, taxation and auditing; Design of computers and computer software for commercial analysis and reporting; Installation and customisation of computer software applications; Programming of database management software, programming of software for web portals, chatrooms, chat lines and internet forums, computer programming of systems for processing and transmitting data, programming of educational software; Creation, administration and maintenance of websites in the fields of law, finance, accounting, book-keeping, taxation and auditing; Providing use of software designed for the electronic presentation of information in the fields of law, finance, accounting, book-keeping, taxation and auditing; Management of electronic platforms used for financial and taxation settlements; consulting services and Consultancy relating to computer applications, computer programs, and computer database programs and Software, Advice and consultancy relating to information technology; Providing information in the field of information technology via websites; Rental of computer programs, software and applications; Providing temporary use of non-downloadable online software for database management, the importing and management of data, providing temporary use of non-downloadable software applications accessible via websites, providing temporary use of non-downloadable software enabling users to share multimedia content and comments; Cloud computing; Design and development of operating software for accessing and using a cloud computing network, Providing temporary use of online non-downloadable operating software for obtaining access to and use of cloud computing networks.
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 contested ‘applications’ and ‘apps’ are computer programs (Collins English Dictionary).
The contested Mobile applications, Applications downloadable from the internet; Computer software and computer programs; Computer applications, software and programs relating to law, finance, accounting, book-keeping, taxation and auditing; Computer communication software enabling customers to access information relating to law, finance, accounting, book-keeping, taxation and auditing; Computer applications, software and programs relating to education and training in the field of law, finance, accounting, book-keeping, taxation and auditing; Computer applications, software and programs for creating, processing, transmitting, viewing, archiving and managing documents, financial documents, book-keeping documents and taxation documents; Computer applications, software and programs for creating, processing and managing databases relating to documentation, law, finance, accounting, book-keeping, taxation and auditing; Computer applications, software and programs allowing data search and the search and retrieval of information via a computer network; Computer applications, software and programs for processing and analysing market information; apps, Computer software and programs for handling financial transactions; Computer applications, software and programs designed to estimate costs, computer applications, software and programs for invoicing; Computer applications, software and programs for converting currency exchange rates; being computer software programs of various types and for various purposes are similar to the opponent’s Computer software relating to auditing and statistical sampling. The goods have the same nature, methods of use and they can coincide in the manufacturer and user.
The contested Electronic publications, downloadable electronic publications in the form of periodicals, books, manuals, prospectuses, bulletins and pamphlets relating to law, finance, accounting, book-keeping, taxation and auditing, instructional, educational and teaching material in electronic form in the field of law, finance, accounting, book-keeping, taxation and auditing are similar to the opponent’s Computer software relating to auditing and statistical sampling as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.
Contested services in Class 35
The contested Book-keeping and accounting services, Accounting management and book-keeping; Auditing, Business auditing, Business auditing, Accountancy, book keeping and auditing; Tax preparation, setting of taxation rates; Billing services; Preparation of financial statements and statistics; Tax planning, economic and marketing forecasting and analysis; Business advice and consultancy, business organisation, management and administration consultancy, advice and consultancy relating to commercial transactions, advice and consultancy relating to book-keeping, accounting and auditing, advice and consultancy relating to tax preparation, tax consultancy, consultancy relating to market assessment and market reports; Business management and administration, Business administration, Administration (Business -) relating to statistical methods, Administration relating to business appraisal; Compilation and systemisation of information into computer databases, data search in computer files, compilation of information into computer databases, computerised file management, systemisation of information into computer databases; Computerised file management for businesses, updating and maintaining data in computer databases, creation and management of computer databases in the fields of documentation, accounting, book-keeping, taxation and auditing, computerised data processing, retrieval and processing of business data and information; Compilation and systemisation of information into computer databases, compilation and providing of statistical data relating to businesses; Compilation of business statistics and commercial information; Preparation of computerised accounting and book-keeping; Analysis of business data and information, analysis of business management systems, business investigations and marketing research, statistical analysis and reporting, business research and surveys, statistical business surveys, opinion polling; Information relating to book-keeping, accounting, taxation and auditing; Compilation and providing of business and commercial information; Gathering of information relating to business, business investigations and marketing research, gathering of information relating to book-keeping, accounting and auditing; Providing reports relating to accounting information; Creation services and Management of computer databases in the field of finance have different nature, purpose and methods of use compared to all the goods of the opponent. Furthermore, the goods and services are not complementary nor in competition, have different origins and manufacturers and different users. The contested services are dissimilar to all the goods of the opponent.
Contested services in Class 36
The contested Creation and management of electronic systems for gathering, presentation, processing and storage of financial information is similar to the opponent’s Computer software relating to auditing and statistical sampling as they have the same purpose. They can coincide in end user and distribution channels. Furthermore they are complementary.
The contested Financial services and financial advice; Administration of financial affairs, Financial economic analysis; Financial transaction services; Financial reporting and analysis; Consultancy (financial -), Financial consultancy relating to settlements and taxation, tax returns consultancy; Consultancy relating to financial management, financial investment and financial planning, financial planning in the field of taxation, and tax planning (not relating to book-keeping); Financial information, Financial information provided via computer databases, electronic media, the internet, and financial information relating to currency exchange rates have different nature, purpose and methods of use compared to all the goods of the opponent. Furthermore, the goods and services are not complementary nor in competition, have different origins and manufacturers and different users. The contested services are dissimilar to all the goods of the opponent.
Contested services in Class 38
The contested Computer-aided transmission of messages and images; Providing web portals, databases, and internet search engines relating to law, finance, accounting, book-keeping, taxation and auditing; Providing computer programs and applications via the internet for financial and tax settlements and document management, providing access to databases in the fields of law, finance, accounting, book-keeping, taxation and auditing; Providing databases, Providing user access to information on the Internet; Providing internet discussion forums and chatrooms for messaging, comments and multimedia content among users; Electronic interchange of data stored in databases accessible via telecommunications networks, electronic transmission of messages and data, electronic transmission of images, photographs, graphic images and illustrations via a computer network; Transmission and dissemination of information and data via computer networks, the internet, telephone and telecommunications networks; Computer transmission of information accessible via access codes or terminals; Electronic communication services for preparing financial information are similar to the opponent’s Computer software relating to auditing and statistical sampling as they have the same purpose. They can coincide in end user and distribution channels. Furthermore they are complementary.
Contested services in Class 41
The contested Training relating to law, finance, accounting, book-keeping, taxation and auditing; Online training from a computer database or via the internet or extranets; Arranging and conducting of educational training, courses, workshops, seminars and conferences in the fields of law, administration, finance, accounting, book-keeping, taxation, auditing, invoicing and business management, arranging and conducting of training relating to computer application, software and program support in the fields of law, finance, accounting, book-keeping, taxation and auditing; Computerised training in career counselling; Instructional services; Publishing, publication of books, periodicals, magazines and texts, other than publicity texts, including online, and publication of information relating to law, finance, accounting, book-keeping, taxation and auditing; Providing of online electronic publications (not downloadable), publication of texts and printed matter, other than publicity texts, via databases or the internet are similar to the opponent’s User manuals for computer software; all relating to auditing and statistical sampling as they can coincide in end user and distribution channels. Furthermore they are complementary. The publishing services coincide, furthermore, also in their origins when compared to the User manuals for computer software; all relating to auditing and statistical sampling.
The remaining Library services relating to data stored and retrieved electronically, library services provided via computer databases containing information relating to law, finance, accounting, book-keeping, taxation and auditing; Arranging and conducting of educational competitions have different nature, purpose and methods of use compared to all the goods of the opponent. They have also different origins and users. The services are dissimilar to all the goods of the opponent.
Contested services in Class 42
The contested Design, preparation, writing, development, updating, installation, maintenance and servicing of computer programs and software, computer applications and databases, design, preparation, writing, development, updating, installation, maintenance and servicing of computer programs and software, computer applications and databases in the fields of law, finance, accounting, book-keeping, taxation and auditing; Design of computers and computer software for commercial analysis and reporting; Installation and customisation of computer software applications; Programming of database management software, programming of software for web portals, chatrooms, chat lines and internet forums, computer programming of systems for processing and transmitting data, programming of educational software; Creation, administration and maintenance of websites in the fields of law, finance, accounting, book-keeping, taxation and auditing; Providing use of software designed for the electronic presentation of information in the fields of law, finance, accounting, book-keeping, taxation and auditing; Management of electronic platforms used for financial and taxation settlements; consulting services and Consultancy relating to computer applications, computer programs, and computer database programs and Software, Advice and consultancy relating to information technology; Providing information in the field of information technology via websites; Rental of computer programs, software and applications; Providing temporary use of non-downloadable online software for database management, the importing and management of data, providing temporary use of non-downloadable software applications accessible via websites, providing temporary use of non-downloadable software enabling users to share multimedia content and comments; Cloud computing; Design and development of operating software for accessing and using a cloud computing network, Providing temporary use of online non-downloadable operating software for obtaining access to and use of cloud computing networks are similar to the opponent’s computer software relating to auditing and statistical sampling as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.
- 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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention is ranges from average to higher than average due to the specific nature of the goods and services.
- The signs
IDEA | |
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 common element IDEA, and the element TAX, are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark IDEA will be understood as ‘a plan, opinion or belief about something’ (Collins English Dictionary) by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.
As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). The consumer, in the present case will see elements TAX and IDEA. The meaning of the element IDEA has been explained above.
The element ‘TAX’ refers to “an amount of money that one has to pay to the government so that it can pay for public services“ (Collins English Dictionary). Bearing in mind that the relevant goods are software and applications and the services are financial, book keeping and similar business services, in addition to telecommunications, finance related training and software developing services, this element is allusive if not weak for these goods and services.
It is also noted, that when signs consist of both verbal and figurative components, as the contested sign in the present case, then 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).
The contested sign has no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the element IDEA, which forms the earlier mark and is enclosed in its entirety in the contested sign. However, they differ in the element TAX, found allusive if not weak, in the contested sign, and also in the device element.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the element IDEA present in both signs. The pronunciation differs in the sound of the element TAX, found allusive if not weak, in the contested sign.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the signs are found highly similar in respect of the coinciding distinctive element IDEA.
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 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 goods and services have been found partially similar and partially dissimilar. The visual, aural and conceptual aspects have been examined.
The earlier sign and the contested sign have been found to be similar to the extent that they have the word IDEA in common. Although the general rule that the public tends to pay particular attention to the first part of the trade mark is not being disregarded in the present case, the differences between the signs, even though they are placed at the beginning, cannot outweigh the prevailing coinciding elements perceived by the public. The earlier mark is fully encompassed in the contested sign. The differing element TAX has been considered allusive if not weak. The device element is considered to be having less impact on the consumer than the word components as already explained.
Moreover, it should be taken into account that the average consumer only rarely has the chance to make a direct comparison between the different marks and the consumers may be easily confused because they will have to rely on the imperfect picture of the marks that they have kept in their mind.
It is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting goods and services which are identical or similar come from the same or economically liked undertakings. 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). The relevant public could therefore believe that the contested sign is a modification of the earlier mark based on the same core element.
Bearing in mind the foregoing, it is considered that the dissimilarities between the signs are not enough to counteract the significant and evident similarities perceived by the consumers.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly 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 the goods and services found to be similar to those of the earlier trade mark.
The rest of the contested services are dissimilar. As 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 services cannot be successful.
The opponent has also based its opposition on the European Union trade mark registration No 11 484 061 for the word mark ‘IDEA SERVER’ for goods in Class 9.
The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains additional words such as ‘SERVER’ which is not present in the contested trade mark. Moreover, they cover the narrower scope of the goods. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and/or the services are obviously not identical.
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
José Antonio GARRIDO OTAOLA | Erkki MÜNTER | Irina SOTIROVA |
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.