URBITAL | Decision 2568684 - G+J Parenting Media GmbH v. Urbital ApS

Date Published: Sep 24, 2017

OPPOSITION No B 2 568 684

G+J Parenting Media GmbH, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft MBB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Urbital ApS, c/o Christian Ernst Prinsessegade 58, 2. TV, 1422 Copenhagen, Denmark (applicant), represented by Patrade A/S, Fredens Torv 3A, 8000 Aarhus C, Denmark (professional representative).

On 16/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 568 684 is partially upheld, namely for the following contested goods and services:

Class 9: Computer programmes for use in telecommunications; Computer software for inter-network accounting in the telecommunications field; Portable telecommunications apparatus; Telecommunications apparatus; Programmable telecommunication apparatus; Transmitting sets [telecommunication]; Transmitting sets [telecommunication]; Transmitting sets [telecommunication]; Telecommunications apparatus; Telecommunications instruments for use in cellular radio networks; Telecommunications networks; Telecommunications apparatus; Telecommunications apparatus; Goggles; Anti-glare glasses; Spectacles [optics]; Cyclists’ glasses; Goggles for sports; Spectacle cases; Glacier eyeglasses; Goggles; Sunglasses; Computer software for creating searchable databases of information and data; Photographic film [exposed]; Photographic media [films, exposed]; Photographic negatives; Photographic plates [exposed]; Transparencies [photography]; Telecommunications apparatus; Portable telecommunications apparatus; Computer hardware for telecommunications; Access interfaces for managed private circuit networks; Computer networks; Computer network hubs; Computer software downloadable from global computer information networks; Computer software for use in migrating between different computer network operating systems; Computer software for communication between computers over a local network; Computer programs for network management; Computer software for accessing information directories that may be downloaded from the global computer network; Computer programs for network management; Data networks; VPN [virtual private network] hardware; Communications networks; Local area networks; VPN [virtual private network] operating software.

Class 28: Action toys; Face masks being playthings; Blocks (Building -) [toys]; Building games; Electronic activity toys; Remote control toys; Flying discs [toys]; Toys; Toys sold in kit form; Toys being for sale in kit form; Play balloons; Masks [playthings]; Toy air vehicles; Mobiles [toys]; Toy ninja weapons; Inflatable toys; Toys adapted for educational purposes; Tops (Spinning -) [toys]; Games and playthings.

Class 35: Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Negotiation and conclusion of commercial transactions for others via telecommunications systems; Publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; Consultancy for others in connection with business purposes in the fields of architecture, interior design and urban planning design; Placement of design staff; Advertising services relating to the travel industries; Advertising services relating to the travel industries; Promotion [advertising] of travel; Auctioning via telecommunication networks; Negotiation and conclusion of commercial transactions for others via telecommunications systems; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Advertising, including promotion relating to the sale of articles and services for other by means of the transmission of advertising material and dissemination of advertising messages on computer networks; Advertising business especially in the field of telematic and telephone networks; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Business networking services; Business information services provided online from a global computer network or the internet; Providing business information, also via internet, the cable network or other forms of data transfer; On-line promotion of computer networks and websites; On-line advertising on a computer network; Online advertising via a computer communications network; On-line advertising on a computer network; Advertising, including on-line advertising on a computer network; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Dissemination of advertising for others via an on-line communications network on the internet; Providing information about commercial business and commercial information via the global computer network; Provision of advertising space by electronic means and global information networks; Provision of business information via global computer networks.

Class 36: Electronic funds transfer by telecommunications; Valuation relating to the design of buildings; Provision of financial services by means of a global computer network or the internet.

Class 38: Computer bulletin boards; Data transmission and reception services via telecommunication means; High bit-rate data transmission services for telecommunication network operators; Audiovisual transmission services; Data transmission services over telecommunications networks; Telecommunications routing and junction services; Operation of wide-band telecommunications networks; Operation of telecommunications apparatus; Operation of a telecommunications network; Electronic advertising (telecommunications); Electronic exchange of data stored in databases accessible via telecommunication networks; Electronic and telecommunication transmission services; Electronic bulletin board services [telecommunications services]; Providing telecommunications connections to a global computer network; Providing third party users with access to telecommunication infrastructure; Telecommunication gateway services; Information services relating to telecommunications; Interactive telecommunications services; Internet based telecommunication services; Internet based telecommunication services; Communication of data by means of telecommunications; Communications via multinational telecommunication networks; Information, consultancy and advisory services relating to telecommunications; Rental of telecommunication equipment; Leasing of telecommunication lines for access to computer networks; On-line information services relating to telecommunications; Telecommunications routing and junction services; Providing telecommunications connections to a global computer network; Transfer of data by telecommunications; Transfer of data by telecommunications; Signal transmission for electronic commerce via telecommunication systems and data communication systems; Telecommunication of information (including web pages); Telecommunications by e-mail; Telecommunications services using cellular radio networks; Providing telecommunications connections to a global computer network; Telecommunication services; Digital network telecommunications services; Telecommunications services for the distribution of data; Telecommunications services, namely, personal communication services; Providing access to telecommunication networks; Providing electronic telecommunication connections; Providing of access to telecommunication warehousing services; Electronic bulletin boards services (telecommunications); Providing of electronic notice boards (telecommunications); Telecommunications access services; Rental of telecommunication equipment; Providing access to telecommunication networks; Providing electronic telecommunication connections; Provision of telecommunications access to databases and the internet; Providing telecommunications connections to a global computer network or databases; Provision of telecommunication facilities; Provision of telephone directory information to assist in telecommunications; Satelite capacity provision [telecommunications]; Transmission and reception [transmission] of database information via the telecommunication network; Distribution of data or audio visual images via a global computer network or the internet; Operating of electronic communications networks; Providing telecommunications connections to a global computer network; Forums [chat rooms] for social networking; Provision of access to sites on an electronic information network; Providing access to computer networks; Providing user access to global computer networks; Forums [chat rooms] for social networking; Transmission of vision via interactive multimedia networks; Data transmission services between networked computer systems; Transmission of database information via telecommunications networks; Transmission of information via national and international networks; Transmission of information via computers connected to the same telematic network; Rental of access time to global computer networks; Message sending via computer networks.

Class 41: On-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network; Photographic reporting; Photographic composition for others; Film editing (Photographic -); Providing a computer game that may be accessed network-wide by network users; Electronic games services, including provision of computer games on-line or by means of a global computer network; Providing information on entertainment through computer networks; Providing interactive multi-player computer games via the internet and electronic communication networks; Programming [scheduling of programs] on a global computer network; Providing publications from a global computer network or the internet which may be browsed; Publication of electronic newspapers accessible via a global computer network; Publication of the editorial content of sites accessible via a global computer network; Providing a computer game that may be accessed by users on a global network and/or the internet; Electronic games services provided via a global computer network; Game services provided on-line from a computer network; Game services provided on-line from a computer network.

2. European Union trade mark application No 13 816 525 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 13 816 525 ‘URBITAL’. The opposition is based on German trade mark registration No 39 900 903 ‘URBIA’ and German trade mark registration No 3 020 140 252 686 ‘URBIA’. 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.

PRELIMINARY REMARK

Due to the applicant’s proof of use request with regard to some goods and services covered by German trade mark registration No 39 900 903, the opponent excluded these goods and services and therefore there was no need to furnish proof of use.

The goods and services

The goods and services on which the opposition is based are the following:

German trade mark No 39 900 903

Class 9: Teaching apparatus and instruments.

Class 16: Paper, cardboard and goods made from these materials, not included in other clashes; printed matter; typewriters and office requisites (except furniture); instruction and teaching material (except apparatus); playing cards; playing boards.

Class 35: Advertising; office functions.

Class 36: Insurance.

Class 37: Repair and installation of telecommunication facilities; repair and installation of computer facilities.

Class 38: Telecommunication; exploitation of telecommunication facilities; repair and installation of computer facilities.

Class 39: Packaging and storage of goods.

Class 41: Education (for children, youth); providing of training (for children, youth, grown-ups) entertainment (for children, youth, grown-ups).

German trade mark No 3 020 140 252 686

Class 5: Babies’ diapers of cellulose or paper; babies’ diaper-pants of cellulose or paper.

Class 9: Teaching apparatus and instruments; apparatus and instruments for recording, transmission or reproduction of sound and images; data processing apparatus and computers; CDs, DVDs and other digital recording media; software [recorded or downloadable], in particular in the form of apps and multimedia applications, including in the form of baby alarm apps, height and weight calculators, fertility, ovulation, menstrual cycle and vaccination calendars, due date calculators as well as first name finders; computer games [software, recorded or downloadable]; electronic databases, including in the form of midwife, babysitter, first name, nursery and kindergarten databases, encyclopedias and glossaries; electronic publications [recorded or downloadable], including multimedia publications; electronic photographs [recorded or downloadable]; audio books [audio files]; videos [recorded or downloadable]; recorded data files; spectacles [optics], sunglasses, swim goggles; swim aids and swim learning aids in the form of protection and safety equipment; spectacle cases; protective helmets, bicycle helmets; cameras [photography], including for children; checking and monitoring apparatus and instruments; listening apparatus for monitoring babies.

Class 16: Paper, cardboard; trash liners and bags of paper; bibs of paper; facial tissues of paper; towels of paper; paper wipes; tissues of paper; table napkins of paper; paper doilies; cardboard doilies; paper table covers; table decoration of paper; table runners of paper; paper toilet seat covers; gift wrapping paper; gift boxes of cardboard; calendars; friendship books; hygienic paper, pre-moistened hygienic paper; printed matter, in particular books, magazines and posters; photographs, photograph albums; teaching and instructional material [except apparatus]; stationery; adhesives [glues] for paper goods, stationery or household purposes; artists’ materials, modelling paste; brushes; typewriters and office requisites [except furniture].

Class 28: Games and playthings; gymnastic and sporting articles; decorations for Christmas trees; cuddly comforters [playthings]; cuddly toys; toys for babies; play chains for strollers; rattles for babies; flippers for swimming; playthings, in particular with pedagogic or didactic content [Active Toys]; party articles of paper and/or cardboard, namely streamers and confetti; swim aids and swim learning aids for recreational purposes, in particular water wings, pool rings, swimming belts, swimming jackets and swimming noodles.

Class 35: Advertising, in particular publication and dissemination of advertisements; compilation, systemization, updating and maintenance of data in databases, in particular in midwife, babysitter, first name, nursery and kindergarten databases as well as in encyclopedias and glossaries; organization and conducting of exhibitions and trade fairs for commercial and/or advertising purposes; organization and conducting of exhibitions for commercial and/or advertising purposes relating to cultural, training and/or entertainment topics; retail and mail order retail services, including via the Internet and other data networks, relating to the following goods: laundry and bleaching preparations, furbishing preparations, buffiing compounds, grease-removing preparations, abraders, soaps, perfumery, essential oils, toiletries, beauty care cosmetics, hair lotion, dietetic foodstuff and substances for medical purposes, infant formula, dietary supplements for humans, plasters, dressing (medical), disinfectants, machines and machine tools, motors, hand operated tools and implements, cutlery, forks and spoon, razors, scientific surveying, photographic, film, optical, weighing, measuring, signaling, controlling, rescue, and education apparatus and instruments, apparatus and instrument for conducting, switching, transforming, storing, regulating, controlling electricity, apparatus for recording transmission or reproduction of sound and image, magnetic data carriers, recording discs, CDs, DVDs and other digital recording media, mechanism for coin-operated apparatus, calculating machine hardware for data processing, computers, computer software (including apps), databases, surgical and medical instruments and apparatus, orthopedic articles, lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary equipment, vehicles, apparatus for travel by land, in the air, on the water, precious metals and their alloys, and manufactured and coated goods therewith, jewelry, ornaments [jewelry], precious stones, watches and chronometric instruments, paper, cardboard, and goods made from these materials, printed matters, bookbinding material, photographs, stationery, adhesives for stationery or for household purposes, artist materials, paintbrushes, typewriters and office supplies, education and teaching material, plastic materials for packaging, leather and leather imitation, as well as goods made thereof, hides and skins, trunks and traveling bags, bags, umbrellas and parasols, furniture, mirrors, frames, utensils and containers for household and kitchen, combs and sponges, brushes, paintbrush, articles for cleaning purposes, glassware, porcelain and earthenware, textiles and textile goods, bed covers, tablecloths, clothing, footwear, headgear, carpets, door mats and matting, linoleum and other floor coverings, wallpapers, games, toys, gymnastic and sporting articles, decorations for Christmas trees, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice, beers, mineral and aerated waters and other non-alcoholic beverages, fruit drinks and fruit juices and/or syrups and other preparations for making beverages; retail and mail order retail services, including via the Internet and other data networks, with pregnancy, birth, baby, small children’s and/or children’s products as well as with goods, in the areas of food, drink, kitchen, household, hygiene, health, body and/or beauty care, furniture, interior and/or exterior design and/or decoration, security, media, games and playthings, gymnastic and/or sports equipment, strollers and/or other vehicles, playthings, gymnastic and/or sports equipment, strollers and/or other vehicles, clothing and/or other textile products for women and men who want children, pregnant women, young mothers and fathers and babies and/or children; retail and retail mail services, including via the Internet and other data networks, with gift articles as well as with gift and surprise boxes and baskets containing goods of various types, in the areas of food, drink, kitchen, household, hygiene, health, body and/or beauty products, furniture, interior and/or exterior design and/or decoration, security, media, games and playthings, gymnastic and/or sports equipment, strollers and/or other vehicles, clothing and/or other textile products; retail services, namely the compilation of various services for others in order to facilitate the consumers purchasing these services, including via the Internet and other data networks, relating to the following services: organization and conducting of exhibitions and trade fairs for commercial and/or advertising purposes, organization and conducting of trade fairs for economic and/or advertising, for cultural, training and/or entertainment purposes, retail and mail retail service with pregnancy, birth, baby, small children and/or children products and goods, in the area of food, drink, kitchen, household, hygiene, health, body and/or beauty care, furniture, interior and/or exterior design and/or decoration, security, media, games and playthings, gymnastic and/or sports equipment, strollers and/or other vehicles, clothing and/or other textile products for women and men who want children, pregnant women, young mothers and fathers and babies and / or children, retail and retail mail order services with gift articles as well gift and surprise boxes and baskets containing goods of various types, in the areas of food, drink, kitchen, household, hygiene, health, body and/or beauty care, furniture, interior and/or exterior design and/or decoration, security, media, games playthings, gymnastic and/or sports equipment, strollers and/or other vehicles, clothing and/or other textile products, online auction services, organization and conducting of online swap meets, conducting of auctions, arranging of midwives and/or babysitters, telecommunication, in particular providing platforms and portals as well as of access to blogs, chat rooms, chat lines, communities, social networks and forums on the Internet and other data networks, providing of access to databases, providing access to software, apps, multimedia applications and databases, in particular baby alarm apps, height and weight calculators, fertility, ovulation, menstrual cycle and vaccination calendars, due date calculators, first name finders, midwife, babysitter, first name, nursery and kindergarten databases as well as encyclopedias and glossaries, on the Internet and other data networks, providing access to, as well as telecommunications via, portals on the Internet and other data networks, dispatch of gift articles as well as of gift and surprise boxes and baskets containing goods of various types, education, training, entertainment, sporting and cultural activities, providing online electronic publications [not downloadable], including multimedia publications, providing online texts, images, photographs and videos [not downloadable], services of image agencies, namely photography, photographic reporting and providing [rental] of pictorial and film material, radio, television and Internet entertainment, film and audio production, organization and conducting exhibitions for cultural, educational and/or entertainment purposes, arranging and conducting of conferences, congresses, courses, seminars, training courses, symposia and conferences, organization and implementation of competitions [education, entertainment] including photo competitions [education, training, entertainment], nursery schools, operating play facilities and areas for children, arranging and conducting of gambling activities and lotteries, arranging and conducting of knowledge tests [education, training, entertainment], providing of games [nondownloadable] on the Internet and other data networks, providing temporary use of non-downloadable software, including in the form of non-downloadable apps, non-downloadable databases and non-downloadable multimedia products, including in the form of baby alarm apps, height and weight calculators, fertility, ovulation, menstrual cycle and vaccination calendars, due date calculators, first name finders, midwife, babysitter, first name, nursery and kindergarten databases as well as encyclopedias and glossaries, software as a service [SaaS], catering services for providing food and drink, temporary accommodation, child care services, and providing day care services for children, security services for the protection of property and individuals, personal services rendered by others to meet the needs of individuals, foster care of children, as well as in relation to services of a nanny and/or advice including the provision of information on the internet and other data networks, regarding all of the aforementioned; retail services, namely the compilation of different services for others in order to help consumers to purchase those services, including via the internet and other data networks, in terms of the following services: medical services for pregnant women, parents, baby, children and/or family, pregnancy testing, human health and beauty care, and/or counseling including the provision of information, also on the internet and on other data networks, in terms of all of the aforementioned; compilation and presentation of gift articles as well as of gift and surprise boxes and baskets containing goods of various types for presentation and sales purposes, including via the Internet and other data networks; presentation of offers of goods and services on the Internet and other data networks; arranging of contracts for others regarding the purchase and sale as well as the barter of goods and the rendering of services; arranging and conclusion of commercial contracts for others via an online trading platform; online auction services; organization and conducting of online swap meets; conducting of auctions, including via the Internet and other data networks; arranging of midwives and/or babysitters; advisory services, including providing of information, including on the Internet and other data networks, in relation to all of the aforementioned.

Class 38: Telecommunications, in particular providing of platforms and portals as well as of access to blogs, chat rooms, chat lines, communities, social networks and forums on the Internet and other data networks; providing of access to databases; broadcasting and transmission of television, radio, telecommunications and information signals; news agencies, namely collection and delivery of news and information; data services of an online provider, namely electronic transmission of information, texts, drawings and images; providing access to information, texts, drawings and images; providing access to software, apps, multimedia applications and databases, in particular baby alarm apps, height and weight calculators, fertility, ovulation, menstrual cycle and vaccination calendars, due date calculators, first name finders, midwife, babysitter, first name, nursery and kindergarten databases as well as encyclopedias and glossaries, on the Internet and other data networks; providing access to, as well as telecommunications via, portals on the Internet and other data networks; advisory services, including providing of information, including on the Internet and other data networks, in relation to all of the aforementioned.

Class 39: Dispatch of gift articles as well as of gift and surprise boxes and baskets containing goods of various types.

Class 41: Education; training; entertainment; sporting and cultural activities; editing and publication of printed matter [except for advertising purposes]; editing and publication of electronic publications [except for advertising purposes], including multimedia publications; editing and publication of audio books [except for advertising

purposes]; editing and publication of printed and/or electronic publications consisting of texts [other than publicity texts] and/or images, including with moving images and/or sound, including in the form of combined works; providing online electronic publications [not downloadable], including multimedia publications; providing on-line texts, images, photographs and videos [not downloadable]; services of image agencies, namely photography, photographic reporting and providing [rental] of pictorial and film material; radio, television and Internet entertainment; film and audio production; production and recording of videos as well as of television shows and programs; organization and conducting of exhibitions for cultural, training and/or entertainment purposes; arranging and conducting of conferences, congresses, classes, seminars, symposiums and conventions; arranging and conducting of competitions [training, entertainment], including photography competitions [education, training, entertainment]; nursery schools; operating play facilities and areas for children; arranging and conducting of gambling activities and lotteries; arranging and conducting of knowledge tests [education, training, entertainment]; providing of games [nondownloadable] on the Internet and other data networks; advisory services, including providing of information, including on the Internet and other data networks, in relation to all of the aforementioned.

Class 42: Design and development of computer hardware; design, development, maintenance and updating of computer software, including apps, of databases and of multimedia products, including in the form of baby alarm apps, height and weight calculators, fertility, ovulation, menstrual cycle and vaccination calendars, due date calculators, first name finders, midwife, babysitter, first name, nursery and kindergarten databases as well as encyclopedias and glossaries; maintenance of database software; providing temporary use of non-downloadable software, including in the form of non-downloadable apps, non-downloadable databases and non-downloadable multimedia products, including in the form of baby alarm apps, height and weight calculators, fertility, ovulation, menstrual cycle and vaccination calendars, due date calculators, first name finders, midwife, babysitter, first name, nursery and kindergarten databases as well as encyclopedias and glossaries; software as a service [SaaS]; advisory services, including providing of information, including on the Internet and other data networks, in relation to all of the aforementioned.

Class 43: Advisory services, including providing of information, including on the Internet and other data networks, in relation to services for providing food and drink,

temporary accommodation, child care services and providing day care services for children.

Class 44: Advisory services, including providing of information, including on the Internet and other data networks, in relation to medical services as well as in relation to hygienic and beauty care for human beings, conducting of pregnancy tests, including pregnancy, delivery and health advice.

Class 45: Advisory services, including providing of information, including on the Internet and other data networks, in relation to security services for the protection of property and individuals, personal services rendered by others to meet the needs of individuals, foster care of children, as well as in relation to services of a nanny, including security consultancy.

The contested goods and services are the following:

Class 36: Electronic funds transfer by telecommunications; Valuation relating to the design of buildings; Provision of financial services by means of a global computer network or the internet.

Class 39: Services consisting of information relating to journeys, tariffs, timetables and methods of transport; Travel arrangement; Transport of travellers; Provision of tourist travel information; Travel and tour ticket reservation service; Escorting of travellers; Travel courier services; Travel courier services; Travel information; Travel guide services; Travel guide and travel information services; Itinerary travel advice services; Consultancy for travel planning of routes; Itinerary planning services; Reservation of seats for travel; Seat reservation services for travellers; Organisation, booking and arrangement of excursions, day trips and sightseeing tours; Organizing and arranging travel; Organising of foreign travel; Escorting of travellers; Provision of travel information by computer; Provision of information relating to travel routes; Computerised reservation services for travel; Computerised information services relating to travel; Computerised information services relating to travel reservations; Ticketing services for travel; Services for arranging the transportation of travellers; Agency services for arranging the transportation of travellers; Agency services for arranging the transportation of travellers’ luggage; Agency services relating to travel and tours; Agency services for arranging travel; Travel booking agencies; Arranging of travel by coach; Organization of trips; Travel agencies; Travel guide and travel information services; Travel arrangement; Provision of travel information by computer.

Class 42: Design, maintenance and updating of a telecommunications network search engine; developing, maintaining and updating of a search engine for telecommunication networks; Computer programming for telecommunications; Design of telecommunications apparatus and equipment; Research relating to telecommunication techniques; Technical advice in relation to telecommunications; Research relating to telecommunication techniques; Design services for furniture; Architectural services for the design of industrial buildings; Architectural design services relating to exhibitions; Architectural design for exterior decoration; Architectural services for the design of commercial buildings; Construction drafting; Custom design services; Computer programming and software design; Computer aided part and mould design services; Computer aided design services relating to architecture; Computer aided design services; Computer aided design services relating to building projects; Computer aided graphic design; Vehicle design services; Design of lighting systems; Design of protective clothing; Brochure design; Design of buildings; Design services for data processing systems; Retail design services; Design services for display systems for exhibition; Design of ornamental layouts; Packaging design; Packaging design for others; Industrial packaging design services; Designing of packaging and wrapping materials; Consumer product design; Homepage and webpage design; Design of industrial products; Design of information systems; Design of logos for t-shirts; Design of logos for corporate identity; Design of mobile telephones; Pattern design; New product design; Design of games; Design of sports facilities; Design of three dimensional displays; Designing of watches; Designing websites for advertising purposes; Designing and implementing web sites for others; Designing and implementing network web pages for others; Design and development of networks; Design and maintenance of computer sites for third parties; Designing, managing and monitoring online forums for discussion; Design, creation, hosting and maintenance of internet sites for third parties; Design, creation, hosting and maintenance of internet sites for third parties; Design, maintenance, development and updating of computer software; Design services relating to architecture; Design of software; Design of signs; Design services relating to the publication of documents; Design services relating to the development of computerised information processing systems; Packaging design; Styling [industrial design]; Illustration services (design); Commercial design services; commercial and packaging design services; Design services for furniture; Creating, designing and maintaining web sites; Creation, design, development and maintenance of Web sites for third parties; Planning [design] of buildings; Planning (design) of commercial areas; Design of products; Product design and development; Advisory services relating to industrial design; Consultancy with regard to webpage design; Product design services; Preparation of architectural design; Visual design; Scientific and technological services and research and design relating thereto; Industrial design; Architectural design; Architectural design services relating to exhibitions; Architectural services for the design of commercial buildings; Construction drafting; Computer software design; Design of computer databases; Website design services; Designing computer software for controlling self-service terminals; Design services for data processing systems; Brand design services; Engineering design services; Engineering design; Advisory services relating to design engineering; Advisory services relating to building design; Dress designing; Engineering services relating to the design of communications systems; Engineering services for the design of structures; Industrial design; Dress designing; Fashion design consulting 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 terms ‘in particular’ and ‘including’, used in the applicant’s and the opponent’s lists of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and the opponent’s lists of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 contested computer programmes for use in telecommunications; computer software for inter-network accounting in the telecommunications field; computer software for creating searchable databases of information and data; computer software downloadable from global computer information networks; computer software for use in migrating between different computer network operating systems; computer software for communication between computers over a local network; computer programs for network management; computer software for accessing information directories that may be downloaded from the global computer network; computer programs for network management; VPN [virtual private network] operating software are included in the broad category of, or overlap with, the opponent’s software [recorded or downloadable]. Therefore, they are identical.

The contested portable telecommunications apparatus (listed twice in the list of the contested goods and services); telecommunications apparatus (listed five times in the list of the contested goods and services); programmable telecommunication apparatus; transmitting sets [telecommunication]; transmitting sets [telecommunication]; transmitting sets [telecommunication]; telecommunications instruments for use in cellular radio networks are included in the broad category of, or overlap with, the opponent’s apparatus and instruments for recording, transmission or reproduction of sound and images. Therefore, they are identical.

The contested spectacles [optics]; spectacle cases; sunglasses are identically contained in both lists of goods.

The contested goggles; anti-glare glasses; cyclists’ glasses; goggles for sports; glacier eyeglasses; goggles are identical to the opponent’s spectacles [optics], because they are included in the broad category of, or overlap with, the opponent’s spectacles [optics]. Therefore, they are identical.

The contested computer hardware for telecommunications; VPN [virtual private network] hardware are included in the broad category of the opponent’s data processing apparatus and computers. These goods are identical.

The contested photographic film [exposed]; photographic media [films, exposed]; photographic negatives; photographic plates [exposed]; transparencies [photography] are similar to the opponent’s cameras [photography]. These goods belong to the same market sector and therefore target the same public and have the same distribution channels. They can also be manufactured by the same undertaking or economically linked undertakings.

The contested telecommunications networks; access interfaces for managed private circuit networks; computer networks; computer network hubs; data networks; communications networks; local area networks are similar to the opponent’s telecommunications in Class 38. These goods and services have the same purpose and are complementary. They target the same public and have the same commercial origin.

Contested goods in Class 28

The contested games and playthings are identically contained in both lists of goods in Class 28.

Action toys; face masks being playthings; blocks (building -) [toys]; building games; electronic activity toys; remote control toys; flying discs [toys]; toys; toys sold in kit form; toys being for sale in kit form; play balloons; masks [playthings]; toy air vehicles; mobiles [toys]; toy ninja weapons; inflatable toys; toys adapted for educational purposes; tops (spinning -) [toys] are included in the broad category of the opponent’s games and playthings. Therefore, they are identical.

Contested services in Class 35

The contested electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; advertising services relating to the travel industries; advertising services relating to the travel industries; promotion [advertising] of travel; advertising by transmission of on-line publicity for third parties through electronic communications networks; advertising, including promotion relating to the sale of articles and services for other by means of the transmission of advertising material and dissemination of advertising messages on computer networks; advertising business especially in the field of telematic and telephone networks; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; on-line promotion of computer networks and websites; on-line advertising on a computer network; online advertising via a computer communications network; on-line advertising on a computer network; advertising, including on-line advertising on a computer network; advertising by transmission of on-line publicity for third parties through electronic communications networks; dissemination of advertising for others via an on-line communications network on the internet; provision of advertising space by electronic means and global information networks are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested negotiation and conclusion of commercial transactions for others via telecommunications systems (present twice in the list of contested services) overlap with the opponent’s arranging and conclusion of commercial contracts for others via an online trading platform. Therefore, they are identical.

The contested auctioning via telecommunication networks is included in the broad category of the opponent’s online auction services. Therefore, they are identical.

The contested placement of design staff; consultancy for others in connection with business purposes in the fields of architecture, interior design and urban planning design; business networking services; business information services provided online from a global computer network or the internet; providing business information, also via internet, the cable network or other forms of data transfer; providing information about commercial business and commercial information via the global computer network; provision of business information via global computer networks are similar to the opponent’s office functions. These services are closely connected. They have the same purpose of helping the contracting company to perform its tasks. They target the same public and often have the same origin.

Contested services in Class 36

The contested electronic funds transfer by telecommunications; valuation relating to the design of buildings; provision of financial services by means of a global computer network or the internet are similar to the opponent’s insurance. These services have the same distribution channels, target the same public and can originate from the same undertaking or economically linked undertakings.

Contested services in Class 38

The contested computer bulletin boards; data transmission and reception services via telecommunication means; high bit-rate data transmission services for telecommunication network operators; audiovisual transmission services; data transmission services over telecommunications networks; telecommunications routing and junction services; operation of wide-band telecommunications networks; operation of telecommunications apparatus; operation of a telecommunications network; electronic advertising (telecommunications); electronic exchange of data stored in databases accessible via telecommunication networks; electronic and telecommunication transmission services; electronic bulletin board services [telecommunications services]; providing telecommunications connections to a global computer network; providing third party users with access to telecommunication infrastructure; telecommunication gateway services; information services relating to telecommunications; interactive telecommunications services; internet based telecommunication services; internet based telecommunication services; communication of data by means of telecommunications; communications via multinational telecommunication networks; information, consultancy and advisory services relating to telecommunications; rental of telecommunication equipment; leasing of telecommunication lines for access to computer networks; on-line information services relating to telecommunications; telecommunications routing and junction services; providing telecommunications connections to a global computer network; transfer of data by telecommunications; transfer of data by telecommunications; signal transmission for electronic commerce via telecommunication systems and data communication systems; telecommunication of information (including web pages); telecommunications by e-mail; telecommunications services using cellular radio networks; providing telecommunications connections to a global computer network; telecommunication services; digital network telecommunications services; telecommunications services for the distribution of data; telecommunications services, namely, personal communication services; providing access to telecommunication networks; providing electronic telecommunication connections; providing of access to telecommunication warehousing services; electronic bulletin boards services (telecommunications); providing of electronic notice boards (telecommunications); telecommunications access services; rental of telecommunication equipment; providing access to telecommunication networks; providing electronic telecommunication connections; provision of telecommunications access to databases and the internet; providing telecommunications connections to a global computer network or databases; provision of telecommunication facilities; provision of telephone directory information to assist in telecommunications; satelite capacity provision [telecommunications]; transmission and reception [transmission] of database information via the telecommunication network; distribution of data or audio visual images via a global computer network or the internet; operating of electronic communications networks; providing telecommunications connections to a global computer network; forums [chat rooms] for social networking; provision of access to sites on an electronic information network; providing access to computer networks; providing user access to global computer networks; forums [chat rooms] for social networking; transmission of vision via interactive multimedia networks; data transmission services between networked computer systems; transmission of database information via telecommunications networks; transmission of information via national and international networks; transmission of information via computers connected to the same telematic network; rental of access time to global computer networks; message sending via computer networks are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 39

The contested services consisting of information relating to journeys, tariffs, timetables and methods of transport; travel arrangement; transport of travellers; provision of tourist travel information; travel and tour ticket reservation service; escorting of travellers; travel courier services; travel courier services; travel information; travel guide services; travel guide and travel information services; itinerary travel advice services; consultancy for travel planning of routes; itinerary planning services; reservation of seats for travel; seat reservation services for travellers; organisation, booking and arrangement of excursions, day trips and sightseeing tours; organizing and arranging travel; organising of foreign travel; escorting of travellers; provision of travel information by computer; provision of information relating to travel routes; computerised reservation services for travel; computerised information services relating to travel; computerised information services relating to travel reservations; ticketing services for travel; services for arranging the transportation of travellers; agency services for arranging the transportation of travellers; agency services for arranging the transportation of travellers’ luggage; agency services relating to travel and tours; agency services for arranging travel; travel booking agencies; arranging of travel by coach; organization of trips; travel agencies; travel guide and travel information services; travel arrangement; provision of travel information by computer all relate to travel arrangement services for people. The opponent’s services in Class 39 concern the storage, packaging or dispatching of goods. The applicant’s services involve travel arrangements, which have a different purpose and satisfy different needs from the opponent’s services and, also unlike the opponent’s services, they are intended for the transport of people and not goods. Therefore, the contested services also target a different public and are not usually rendered by the same types of companies as the opponent’s services. These services are therefore dissimilar.

These contested services are also dissimilar to all the remaining goods and services covered by the earlier rights. These goods and services have different purposes, methods of use and natures. They are neither in competition nor complementary. They have different distribution channels and do not usually come from the same undertaking or economically linked undertakings.

Contested services in Class 41

The contested on-line library services, namely, providing electronic library services which feature newspapers, magazines, photographs and pictures via an on-line computer network are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested photographic reporting is identically contained in both lists of services.

The contested providing information on entertainment through computer networks is included in the broad category of, or overlaps with, the opponent’s entertainment. Therefore, they are identical.

The contested programming [scheduling of programs] on a global computer network is included in the broad category of the opponent’s radio, television and Internet entertainment. Therefore, they are identical.

The contested providing a computer game that may be accessed network-wide by network users; electronic games services, including provision of computer games on-line or by means of a global computer network; providing interactive multi-player computer games via the internet and electronic communication networks; providing a computer game that may be accessed by users on a global network and/or the internet; electronic games services provided via a global computer network; game services provided on-line from a computer network; game services provided on-line from a computer network overlap with the opponent’s providing of games [nondownloadable] on the Internet and other data networks. Therefore, they are identical.

The contested providing publications from a global computer network or the internet which may be browsed; publication of electronic newspapers accessible via a global computer network; publication of the editorial content of sites accessible via a global computer network are included in the broad category of, or overlap with, the opponent’s providing online electronic publications [not downloadable], including multimedia publications. Therefore, they are identical.

The contested photographic composition for others; film editing (photographic -) are included in the broad category of the opponent’s services of image agencies, namely photography, photographic reporting and providing [rental] of pictorial and film material. They are identical.

Contested services in Class 42

The contested design, maintenance and updating of a telecommunications network search engine; developing, maintaining and updating of a search engine for telecommunication networks are at least similar to the opponent’s design, development, maintenance and updating of computer software, as nowadays the telecommunication and IT sectors are closely connected. These services are usually offered by the same undertaking or economically linked undertakings, are provided via the same channels and target the same public.

The contested design of telecommunications apparatus and equipment; research relating to telecommunication techniques; technical advice in relation to telecommunications; research relating to telecommunication techniques; design services relating to the development of computerised information processing systems; design services for data processing systems; design of information systems; design and development of networks; engineering services relating to the design of communications systems are at least similar to the opponent’s design and development of computer hardware. These services are usually offered by the same undertaking or economically linked undertakings, are provided via the same channels and target the same public.

The contested design of computer databases overlaps with the opponent’s design of computer software, including apps, of databases and of multimedia products, including in the form of baby alarm apps, height and weight calculators, fertility, ovulation, menstrual cycle and vaccination calendars, due date calculators, first name finders, midwife, babysitter, first name, nursery and kindergarten databases as well as encyclopedias and glossaries. These services are identical.

Custom design services overlap with the opponent’s design of computer software. These services are identical.

Design of games is included in the broad category of the opponent’s design, development of computer software. These services are identical.

The contested computer programming for telecommunications; computer programming and software design; designing computer software for controlling self-service terminals; design, maintenance, development and updating of computer software; design of software; computer software design are identical to the opponent’s design, development, maintenance and updating of computer software, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, or overlap with, the contested services.

The contested scientific and technological services and research and design relating thereto are considered similar to the opponent’s design, development of computer software. These services have the same nature, target the same public and originate from the same undertaking or economically linked undertakings.

The contested designing websites for advertising purposes; designing and implementing web sites for others; designing and implementing network web pages for others; design and maintenance of computer sites for third parties; designing, managing and monitoring online forums for discussion; design, creation, hosting and maintenance of internet sites for third parties; design, creation, hosting and maintenance of internet sites for third parties; creating, designing and maintaining web sites; creation, design, development and maintenance of web sites for third parties; consultancy with regard to webpage design; homepage and webpage design; website design services; design services relating to the publication of documents are considered similar to the opponent’s design, development, maintenance and updating of computer software. These services target the same public, are distributed through the same channels and are provided by the same undertakings.

Brand design services are considered similar to advertising in Class 35. These services target the same public, have the same distribution channels and originate from the same undertaking or economically linked undertakings.

Brochure design; design services for display systems for exhibition; design of mobile telephones are similar to design and development of computer hardware. These services target the same public, have the same distribution channels and originate from the same undertaking or economically linked undertakings.

Design of products; product design and development; computer aided design services; computer aided graphic design; consumer product design; new product design; product design services; engineering design services; engineering design include as broad categories, or overlap with, the opponent’s design and development of computer hardware. They are therefore identical.

The contested design services for furniture; architectural services for the design of industrial buildings; architectural design services relating to exhibitions; architectural design for exterior decoration; architectural services for the design of commercial buildings; construction drafting; vehicle design services; design of lighting systems; design of protective clothing; design of buildings; retail design services; design of ornamental layouts; packaging design; packaging design for others; industrial packaging design services; designing of packaging and wrapping materials; design of industrial products; design of logos for t-shirts; design of logos for corporate identity; pattern design; design of sports facilities; design of three dimensional displays; designing of watches; design services relating to architecture; design of signs; packaging design; styling [industrial design]; illustration services (design); commercial design services; commercial and packaging design services; design services for furniture; planning [design] of buildings; planning (design) of commercial areas; advisory services relating to industrial design; preparation of architectural design; visual design; industrial design; architectural design; architectural design services relating to exhibitions; architectural services for the design of commercial buildings; construction drafting; advisory services relating to design engineering; advisory services relating to building design; dress designing; engineering services for the design of structures; industrial design; dress designing; fashion design consulting services are different design services related to architectural and industrial design. These services are not directly related to any of the opponent’s goods or services. These services have different purposes and natures. They are neither complementary nor in competition. They satisfy different needs, have distinct distribution channels and originate from different undertakings. They are considered dissimilar.

By analogy, the contested computer aided part and mould design services; computer aided design services relating to architecture; computer aided design services relating to building projects are also considered dissimilar to all the opponent’s goods and services. The mere fact that these services are rendered with the aid of computers does not render them similar to the opponent’s IT-related goods and services.

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 partly at the public at large and at business customers with specific professional knowledge or expertise and partly at professionals only (most of the services in Classes 35 and 42).

The degree of attention will vary from average to higher than average in the case, for example, of computer programming for telecommunications in Class 42.

The signs

URBIA

URBITAL

Earlier trade marks

Contested sign

The relevant territory is Germany.

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).

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 and aurally, the signs coincide in ‘URBI*A’. However, they differ in the additional letters/sounds ‘T’ and ‘L’ of the contested sign, which have no counterparts in the earlier signs. However, these small differences at the ends of the marks cannot offset the overall similarity produced by the more numerous commonalities in the more important beginnings of the signs, as well as the presence of the same vowel in their endings. The applicant argues that the letter ‘A’ in the ending ‘-TAL’ will be pronounced in a longer way than the letter ‘A’ of the earlier signs. However, this fact does not alter the significant aural similarity between the signs.

Therefore, the signs are visually and aurally similar to an average degree.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

Global assessment, other arguments and conclusion

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 goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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).

In the present case, the goods and services are partly identical, partly similar and partly dissimilar. Some target the public at large and business customers and some target only professionals.

The first parts of the signs are identical and the marks have the same letter sequence ‘URBI*A’, albeit with differences in the endings. The identical beginnings of the signs and the difference in only two letters, placed in non-prominent positions, lead to significant visual and aural similarities between the signs. Therefore, the similarities discussed above are considered sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade marks.

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.

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

Justyna GBYL

Katarzyna ZANIECKA

Adriana VAN ROODEN

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.

URBITAL | Decision 2568684 - G+J Parenting Media GmbH v. Urbital ApS

Start your Trademark Study today!