(Trade mark without text) | Decision 2698424 - Google Inc. v. YH CONSULTING LIMITED
Date Published: Sep 28, 2017
OPPOSITION No B 2 698 424
Google Inc.,1600 Amphitheatre Parkway, Mountain View, California 94043, United States of America (opponent), represented by Grünecker Patent- Und Rechtsanwälte Partg Mbb, Leopoldstr. 4, 80802 München, Germany (professional representative)
a g a i n s t
Yh Consulting Limited, Rm 2210-11 22/F Tuen Mun Central Plaza, 22 Hoi Wing Road, Tuen Mun Nt, Hong Kong, Special Administrative Region of the People’s Republic of China (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).
On 23/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 698 424 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 061 666, namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 13 533 963. 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: Computer software, namely authentication program for use in prevention of abuse and fraud in online websites and web applications; computer software for managing and filtering electronic communications.
Class 42: Application service provider featuring software for abuse prevention in online websites and web applications and for managing and filtering electronic communications; application service provider featuring application programming interface (API) software for abuse prevention in online websites and web applications; providing information in the field of website security and the prevention of online abuse and computer attacks.
The contested goods and services, following a restriction of the scope of the opposition made by the opponent in its submissions on 15/11/2016, are the following:
Class 9: Data processing apparatus; Computer memory devices; Computers; bar code readers; Computer peripheral devices; Computer software [recorded]; Central processing units [processors]; Publications (Electronic-) [downloadable]; Computer programs [downloadable software]; Laptop computers; tablet computers; Electronic pocket translators; computer game software; Downloadable image files; Smartphones; Global Positioning System [GPS] apparatus; cordless telephones; Vehicles (Navigation apparatus for-) [on-board computers]; Satellite navigational apparatus; Counters.
Class 42: Technical research; Weather forecasting; Styling [industrial design]; Computer programming; Computer system design; Hosting computer sites [web sites]; Search engines (Providing-) for the internet; Software as a service [SaaS]; Cloud computing; cartography services.
Some of the contested goods and services are identical to the goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average (e.g. publications (electronic-) [downloadable]) to high (e.g. computer system design) depending on the price or specialised nature of the goods and services.
- The signs
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).
Both signs are figurative, consisting of a round shape, similar to a circle, composed of arrows. The signs have no elements that could be considered clearly more eye-catching (dominant) than other elements.
The arrows of both signs have no meaning in relation to the goods and services at issue for the relevant public and are, therefore, distinctive.
The figurative element (round shape composed of arrows) of both signs will be understood identically, that is, associated with the concept of an ‘arrow’ and, with regard to the round shape, the concept of a circle.
Visually, the signs coincide in the depiction of arrows in the shape of a circle. However, they differ in the shape, shades of colour, number and direction of the arrows. The earlier mark is composed of three relatively wide arrows of identical shape in shades of grey, whereas the contested sign is composed of five black arrows with one white side, the size of which increases significantly with each consecutive arrow, forming a larger interior circle than the earlier sign. Furthermore, the tail of the first arrow in the contested sign begins with three small geometric shapes.
From the foregoing, it is clear that the stylisation of the signs at issue is visually different in its expression.
The previous decisions of the Office referred to by the opponent to support its arguments in favour of a visual similarity between the signs at issue do not alter this dissimilar perception at all. Indeed, apart from the fact that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198), it must be noted that in these previous cases, contrary to the opponent’s view, the signs involved definitely display more similarities than in the present case. Unlike the present case, the signs analysed in decisions 28/08/2012, No B 2 060 690 and 08/08/1997, No B 1 356 were almost identical, with the only difference being the orientation of the signs. In some cases (29/12/2012, R 1764/2011-1; 30/06/2009, R 1016/2007-4; 23/08/2005, No B 890 808; and 17/05/2001, No B 390 957), the signs were also composed of identical verbal elements. In decision 10/03/2004, No B 685 471, although there were some negligible differences, the signs in question both contained the same colours and the same arrow shape in the same orientation. However, in the present case, as already stated above, not only are the shades of colour very different but the shapes and the stylisation of the arrows are also totally different. Therefore, it is concluded that the signs are visually similar to a low degree.
Aurally, purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as arrows, forming a circle, the signs are conceptually identical.
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 goods and services were assumed to be identical. The signs are visually similar to low degree and conceptually identical.
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).
According to the same line of case-law, 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).
A conceptual similarity between signs with analogous semantic content may give rise to a likelihood of confusion where the earlier mark is particularly distinctive (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24). In the present case, the opponent did not explicitly claim in its notice of opposition, or within the period to substantiate the earlier mark, that its mark is particularly distinctive by virtue of intensive use or reputation.
In the present case, the only thing the signs have in common is that they both contain a depiction of arrows. But, as seen above, these figurative elements have obvious differences in their set-up, stylisation and aesthetic expression (e.g. the different shades of colour, the different arrow shapes, and the different number and direction of the arrows). The visual similarity is found to be of only a low degree and will not prevent consumers who are reasonably attentive from distinguishing safely between the signs, due to their sufficiently different overall impressions. Therefore, considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
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.
The Opposition Division
Gueorgui IVANOV | Patricia LÓPEZ FERNÁNDEZ DE CORRES | Dorothee SCHLIEPHAKE |
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.