VOLO | Decision 2723990

Date Published: Sep 25, 2017

OPPOSITION No B 2 723 990

Autovolo Ltd, 6 Devonshire Business Park, Chester Road, Borehamwood, Hertfordshire WD6 1NA, United Kingdom (opponent), represented by Wildbore & Gibbons LLP, Sycamore House, 5 Sycamore Street, London EC1Y 0SG, United Kingdom (professional representative)

a g a i n s t

Volo Commerce Limited, c/o Harrison Clark Rickerbys, 5 Deansway, Worcester, Worcestershire WR1 2JG, United Kingdom (applicant), represented by Harrison Clark Rickerbys IP, 5 Deansway, Worcester, Worcestershire WR1 2JG, United Kingdom (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 723 990 is partially upheld, namely for the following contested goods and services:

Class 9:         Computer programs, computer software, downloadable computer software, but not in relation to aircraft transportation and/or travel; computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; computer software for carrying out e-commerce and m-commerce and providing e-commerce and m-commerce solutions; computer software for multiple online e-commerce and m-commerce platform management; computer software for tracking and managing orders, inventory, returns and sales; computer software for the creation, management and development of web sites; computer software for web content management; computer software for web portal solutions; computer software for e-commerce and m-commerce business planning; computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; computer software for use in online retail services; computer software for business management and decision support; computer software for business accounting; computer software for customer relationship management; computer software for electronic data integration; computer software for enterprise resource planning; computer software for online advertising and marketing; computer software for online shopping and sales and business-to business applications; software tools for business analysis; software; online business process automation software; computer software for supply chain management and logistics; computer software for warehouse management; computer software for e-fulfilment; computer software for accounting services, namely, bookkeeping, invoice processing, payment processing, billing and reporting of debt collection; computer software applications to enable the implementation, operation, hosting and maintenance of electronic commerce across multi-platform electronic commerce channels, the conduct of business globally across those channels, including sourcing, procurement and fulfilment, and the conduct of business intelligence, including reporting, cross-entity business analytics, and business decision support, none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access.

Class 35:        Advertising and business management consultancy; advertising and promotion services and related consulting; advertising consultation; assistance, advisory services and consultancy with regard to business planning, business analysis, business administration; business management, and business organization; business consultation services; marketing consulting; data processing; business management and organization consultancy, business management assistance, all related to conducting of e-commerce and m-commerce business, online sales and business on e-commerce and m-commerce software platforms; business management assistance relating to e-commerce and m-commerce business and multiple e-commerce and m-commerce platform growth; information, advisory and consultancy services relating to business and management or business administration, including such services provided on line or via the internet; administration of the business affairs of retail stores for others and management of retail enterprises for others; online retail store featuring downloadable computer software for creation, management and development of web sites, e-commerce and m-commerce platform management and e-commerce and m-commerce solutions, web content management and portal solutions; retail services and online retail services in relation to computer software, downloadable computer software, computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce, computer software for carrying out e-commerce and m-commerce and providing e-commerce and m-commerce solutions, computer software for multiple online e-commerce and m-commerce platform management, computer software for tracking and managing orders, inventory, returns and sales, computer software for the creation, management and development of web sites, computer software for web content management, computer software for web portal solutions, computer software for e-commerce and m-commerce business planning, computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce, computer software for use in online retail services, computer software for business management and decision support, computer software for business accounting, computer software for customer relationship management, computer software for electronic data integration, computer software for enterprise resource planning, computer software for online advertising and marketing, computer software for online shopping and sales and business-to business applications, software tools for business analysis, software; online business process automation software, computer software for supply chain management and logistics, computer software for warehouse management, computer software for e-fulfilment, computer software for accounting services, namely, bookkeeping, invoice processing, payment processing, billing and reporting of debt collection, computer software applications to enable the implementation, operation, hosting and maintenance of electronic commerce across multi-platform electronic commerce channels, the conduct of business globally across those channels, including sourcing, procurement and fulfilment, and the conduct of business intelligence, including reporting, cross-entity business analytics, and business decision support; consultancy, information and advisory services to the aforesaid services, none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access.

Class 38:        Telecommunications services and data communication services; Telecommunications services, namely, the electronic transmission of data and information; provision of on-line communications services; communications via a global computer network or the Internet; sending information and computer programs via telecommunication services, including on-line services; electronic data exchange services; remote data access services; provision of access to web pages; transmission and distribution of data or audio visual images via a global computer network or the Internet providing access to computer databases; providing access to portals on the Internet; computerised on-line services for business professionals namely providing access via global and non-global computer networks to computer software for enterprise resource planning and use in storing, managing, tracking and analysing data in the fields of e-commerce and m-commerce, none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access.

Class 42:        Design and development of computer software, software applications and application programming interfaces, but not in relation to aircraft transportation and/or travel; consulting and technical support services in the field of design and use of computer programs, computer software and databases; computer software design services, but not in relation to aircraft transportation and/or travel; database design services, but not in relation to aircraft transportation and/or travel; development, design and provision of programs and databases that provide business and financial management over computer networks and the Internet, but not in relation to aircraft transportation and/or travel; computer and technical consultancy support services including troubleshooting; computer consulting and technical services in the field of design, implementation and use of e-commerce and m-commerce software systems; platform as a service (PAAS) featuring computer software platforms to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; Software as a Service (SaaS) featuring computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; hosting, managing, developing, analyzing, and maintaining applications, software, and web sites, of others in the fields of e-commerce and m-commerce, electronic data integration (EDI), enterprise resource planning (ERP), online advertising and business-to-business applications; Software-as-a-service (SaaS) for online business process automation software applications for the consolidation of business and financial data; SaaS for use in the field of Enterprise Resource Planning (ERP) including accounting, payroll, on-line bill paying, e-procurement, employee time and billing and expense reporting, financial management, business management, customer support, and office and business productivity, business, finance, purchasing, sales, human resources, manufacturing, sourcing, and information technology infrastructure, supply chain management, and logistics; SaaS for use in the field of Customer Relationship Management (CRM), in the nature of contact management, sales force automation, commission and quota management, marketing, partner relationship management, customer service and support; SaaS for use in the field of electronic commerce, in the nature of providing a platform for others that enable the implementing, operating, hosting and maintaining of e-commerce and m-commerce web sites, and the conduct of business across those electronic commerce web sites; SaaS for use in business intelligence, including reporting, business analytics, and decision support; software-as-a-service (SaaS) and platform-as-a-service (PaaS) featuring computer software and on-demand applications that enable the implementation, operation, hosting and maintenance of e-commerce and m-commerce solutions across multiple e-commerce and m-commerce platforms including sourcing, procurement and fulfilment, and the conduct of business intelligence; software as a service (SaaS) services featuring software for human resources management, software for content management, software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce, and software for use by others in business management; debugging, maintenance and updating of computer software; providing temporary use of non-downloadable software applications, development platforms and development tools that enable software developers to program and build developer software applications that work in conjunction with such non-downloadable software applications, non-downloadable e-commerce software to conduct electronic and mobile business; software-as-a-service (SaaS) featuring computer software for accounting services, namely, bookkeeping, invoice processing, billing and reporting of debt collection; software-as-a-service (SaaS) featuring computer software for global business management, namely, preparing business reports, expense report processing, purchase order processing, knowledge management, creating business proposals, project management, contact management and form and calendar generation; software-as-a-service (SaaS) featuring computer software for global personnel management, namely, time keeping, time sheet processing, attendance tracking and resource management, namely, evaluating the availability of personnel; computer services, namely, providing temporary use of a non-downloadable software engine for core accounting functions, hosting and maintaining an on-line web site for others to maintain e-commerce and m-commerce application and facilitate electronic business transactions, and implementing network web pages for others; computer consulting services in the field of design, implementation and use of e-commerce and m-commerce software systems for others; computer network design for others; programming and software design; software design for others; software design, programming, or maintenance of software; design of home pages, software and web sites; design, development and implementation of software; providing a website featuring technical information relating to computer software provided; providing computer software support and consulting services, architectural design of software applications, technical support services, troubleshooting in the nature of diagnosing and repairing computer software problems; technical support services, namely, troubleshooting of e- commerce software problems; and technical support services in setting up e-commerce and m-commerce stores, namely, troubleshooting the implementation and use of computer e-commerce and m-commerce software systems and the design of homepages and websites; consultancy, information and advisory services to all the aforesaid services, but not in relation to aircraft transportation and/or travel; electronic data storage; hosting of portals on the internet, none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access.

2.        European Union trade mark application No 14 227 731 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 14 227 731. The opposition is based on European Union trade mark registration No 13 601 927. 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.

1. The goods and services

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

Class 9:         Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; compact discs; pre-recorded tapes, disks, records, videos and video disks; publications in electronic form supplied on-line from data bases or from facilities provided on the Internet (including web sites); electronic publications (downloadable), electronic magazines; multi-media recordings and publications; computer software, computer software to enable searching of data; computer software for individual and multi user access directly and remotely to computers, data bases, networks, intranets and the Internet; mass mailing software; computer games programs downloaded via the Internet; data recorded in electronic, optical or magnetic form; data carriers; CD Roms; CDI’s, CD Rom discs; cassettes and other data carriers containing information recorded in magazine form; electronic mail boxes.

Class 35:        Advertising services; consultancy and information services relating to the rental and sale of advertising space; television and radio advertising; business administration and information services; on-line business information services; database management; compilation and dissemination of business directories and customer listings; compilation of advertisements for use as web pages; database management of cherished vehicle registration numbers; organisation, arranging, implementation, conducting and presentation of exhibitions, business shows, demonstrations, trade shows, business and commercial trade shows; compilation of advertisements; uploading vehicle stock information; database car search services; compilation, storage, analysis, retrieval and provision of information; on-line services, namely, providing on-line advice for buying and selling cars and negotiating the purchase of cars for sellers; on-line services, namely, providing on-line prize competitions for advertisement purposes; provision of commercial information; providing information online from a computer database or from the internet; provision or display of information from a computer-stored data bank relating to cars for sale; arranging and conducting auctions, organization of internet auctions.

Class 38:        Telecommunications; providing user access to the Internet; providing telecommunications connections to the Internet or database services; facilitating access to information via the Internet and via the World Wide Web; e-mail services; provision of access to a dedicated website on which details of vehicles and vehicle-related goods and services are offered for sale; electronic bulletin board services; telecommunication of information (including web pages); on-line services, namely, providing links to other websites; services for the transmission of data and of information by electronic, computer, electronic mail, optical or cable means; electronic transmission of data over a global communications network; providing access to and leasing access time to computer databases and to on-line computer services; information, advisory and consultancy services relating to providing access to and leasing access time to computer databases and to on-line computer services; providing access to inter-active database information services; providing access to electronic database services; providing access to information via communication and computer networks; providing leasing access time to computer databases and to on-line computer services.

Class 42:        Analysis and provision of information relating to the design of vehicles; updating and design of computer software; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; information, advisory and consultancy services relating to the aforesaid services; providing an e-commerce platform on the Internet featuring a wide variety of information (also interactive information) from a computer-stored data bank.

The contested goods and services are the following:

Class 9:         Computer programs, computer software, downloadable computer software, but not in relation to aircraft transportation and/or travel; computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; computer software for carrying out e-commerce and m-commerce and providing e-commerce and m-commerce solutions; computer software for multiple online e-commerce and m-commerce platform management; computer software for tracking and managing orders, inventory, returns and sales; computer software for the creation, management and development of web sites; computer software for web content management; computer software for web portal solutions; computer software for e-commerce and m-commerce business planning; computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; computer software for use in online retail services; computer software for business management and decision support; computer software for business accounting; computer software for customer relationship management; computer software for electronic data integration; computer software for enterprise resource planning; computer software for online advertising and marketing; computer software for online shopping and sales and business-to business applications; software tools for business analysis; software; online business process automation software; computer software for supply chain management and logistics; computer software for warehouse management; computer software for e-fulfilment; computer software for accounting services, namely, bookkeeping, invoice processing, payment processing, billing and reporting of debt collection; computer software applications to enable the implementation, operation, hosting and maintenance of electronic commerce across multi-platform electronic commerce channels, the conduct of business globally across those channels, including sourcing, procurement and fulfilment, and the conduct of business intelligence, including reporting, cross-entity business analytics, and business decision support; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access.

Class 35:        Advertising and business management consultancy; advertising and promotion services and related consulting; advertising consultation; assistance, advisory services and consultancy with regard to business planning, business analysis, business administration; business management, and business organization; business consultation services; marketing consulting; data processing; business management and organization consultancy, business management assistance, all related to conducting of e-commerce and m-commerce business, online sales and business on e-commerce and m-commerce software platforms; business management assistance relating to e-commerce and m-commerce business and multiple e-commerce and m-commerce platform growth; information, advisory and consultancy services relating to business and management or business administration, including such services provided on line or via the internet; administration of the business affairs of retail stores for others and management of retail enterprises for others; online retail store featuring downloadable computer software for creation, management and development of web sites, e-commerce and m-commerce platform management and e-commerce and m-commerce solutions, web content management and portal solutions; retail services and online retail services in relation to computer programs, computer software, downloadable computer software, computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce, computer software for carrying out e-commerce and m-commerce and providing e-commerce and m-commerce solutions, computer software for multiple online e-commerce and m-commerce platform management, computer software for tracking and managing orders, inventory, returns and sales, computer software for the creation, management and development of web sites, computer software for web content management, computer software for web portal solutions, computer software for e-commerce and m-commerce business planning, computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce, computer software for use in online retail services, computer software for business management and decision support, computer software for business accounting, computer software for customer relationship management, computer software for electronic data integration, computer software for enterprise resource planning, computer software for online advertising and marketing, computer software for online shopping and sales and business-to business applications, software tools for business analysis, software; online business process automation software, computer software for supply chain management and logistics, computer software for warehouse management, computer software for e-fulfilment, computer software for accounting services, namely, bookkeeping, invoice processing, payment processing, billing and reporting of debt collection, computer software applications to enable the implementation, operation, hosting and maintenance of electronic commerce across multi-platform electronic commerce channels, the conduct of business globally across those channels, including sourcing, procurement and fulfilment, and the conduct of business intelligence, including reporting, cross-entity business analytics, and business decision support; consultancy, information and advisory services to the aforesaid services; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access.

Class 38:        Telecommunications services and data communication services; Telecommunications services, namely, the electronic transmission of data and information; provision of on-line communications services; communications via a global computer network or the Internet; sending information and computer programs via telecommunication services, including on-line services; electronic data exchange services; remote data access services; provision of access to web pages; transmission and distribution of data or audio visual images via a global computer network or the Internet providing access to computer databases; providing access to portals on the Internet; computerised on-line services for business professionals namely providing access via global and non-global computer networks to computer software for enterprise resource planning and use in storing, managing, tracking and analysing data in the fields of e-commerce and m-commerce; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access.

Class 42:        Design and development of computer software, software applications and application programming interfaces, but not in relation to aircraft transportation and/or travel; consulting and technical support services in the field of design and use of computer programs, computer software and databases; computer software design services, but not in relation to aircraft transportation and/or travel; database design services, but not in relation to aircraft transportation and/or travel; development, design and provision of programs and databases that provide business and financial management over computer networks and the Internet, but not in relation to aircraft transportation and/or travel; computer and technical consultancy support services including troubleshooting; computer consulting and technical services in the field of design, implementation and use of e-commerce and m-commerce software systems; platform as a service (PAAS) featuring computer software platforms to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; Software as a Service (SaaS) featuring computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; hosting, managing, developing, analyzing, and maintaining applications, software, and web sites, of others in the fields of e-commerce and m-commerce, electronic data integration (EDI), enterprise resource planning (ERP), online advertising and business-to-business applications; Software-as-a-service (SaaS) for online business process automation software applications for the consolidation of business and financial data; SaaS for use in the field of Enterprise Resource Planning (ERP) including accounting, payroll, on-line bill paying, e-procurement, employee time and billing and expense reporting, financial management, business management, customer support, and office and business productivity, business, finance, purchasing, sales, human resources, manufacturing, sourcing, and information technology infrastructure, supply chain management, and logistics; SaaS for use in the field of Customer Relationship Management (CRM), in the nature of contact management, sales force automation, commission and quota management, marketing, partner relationship management, customer service and support; SaaS for use in the field of electronic commerce, in the nature of providing a platform for others that enable the implementing, operating, hosting and maintaining of e-commerce and m-commerce web sites, and the conduct of business across those electronic commerce web sites; SaaS for use in business intelligence, including reporting, business analytics, and decision support; software-as-a-service (SaaS) and platform-as-a-service (PaaS) featuring computer software and on-demand applications that enable the implementation, operation, hosting and maintenance of e-commerce and m-commerce solutions across multiple e-commerce and m-commerce platforms including sourcing, procurement and fulfilment, and the conduct of business intelligence; software as a service (SaaS) services featuring software for human resources management, software for content management, software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce, and software for use by others in business management; debugging, maintenance and updating of computer software; providing temporary use of non-downloadable software applications, development platforms and development tools that enable software developers to program and build developer software applications that work in conjunction with such non-downloadable software applications, non-downloadable e-commerce software to conduct electronic and mobile business; software-as-a-service (SaaS) featuring computer software for accounting services, namely, bookkeeping, invoice processing, billing and reporting of debt collection; software-as-a-service (SaaS) featuring computer software for global business management, namely, preparing business reports, expense report processing, purchase order processing, knowledge management, creating business proposals, project management, contact management and form and calendar generation; software-as-a-service (SaaS) featuring computer software for global personnel management, namely, time keeping, time sheet processing, attendance tracking and resource management, namely, evaluating the availability of personnel; computer services, namely, providing temporary use of a non-downloadable software engine for core accounting functions, hosting and maintaining an on-line web site for others to maintain e-commerce and m-commerce application and facilitate electronic business transactions, and implementing network web pages for others; computer consulting services in the field of design, implementation and use of e-commerce and m-commerce software systems for others; computer network design for others; programming and software design; software design for others; software design, programming, or maintenance of software; design of home pages, software and web sites; design, development and implementation of software; providing a website featuring technical information relating to computer software provided; providing computer software support and consulting services, architectural design of software applications, technical support services, troubleshooting in the nature of diagnosing and repairing computer software problems; technical support services, namely, troubleshooting of e- commerce software problems; and technical support services in setting up e-commerce and m-commerce stores, namely, troubleshooting the implementation and use of computer e-commerce and m-commerce software systems and the design of homepages and websites; consultancy, information and advisory services to all the aforesaid services, but not in relation to aircraft transportation and/or travel; electronic data storage; hosting of portals on the internet; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access.

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

The term ‘including’, used in the applicant’s and opponent’s lists of goods and services, indicates 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, it introduces 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.

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.

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.

Contested goods in Class 9

The contested online business process automation software; computer programs, computer software, downloadable computer software, but not in relation to aircraft transportation and/or travel; computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; computer software for carrying out e-commerce and m-commerce and providing e-commerce and m-commerce solutions; computer software for multiple online e-commerce and m-commerce platform management; computer software for tracking and managing orders, inventory, returns and sales; computer software for the creation, management and development of web sites; computer software for web content management; computer software for web portal solutions; computer software for e-commerce and m-commerce business planning; computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; computer software for use in online retail services; computer software for business management and decision support; computer software for business accounting; computer software for customer relationship management; computer software for electronic data integration; computer software for enterprise resource planning; computer software for online advertising and marketing; computer software for online shopping and sales and business-to business applications; computer software for supply chain management and logistics; computer software for warehouse management; computer software for e-fulfilment; computer software for accounting services, namely, bookkeeping, invoice processing, payment processing, billing and reporting of debt collection; software; computer software applications to enable the implementation, operation, hosting and maintenance of electronic commerce across multi-platform electronic commerce channels, the conduct of business globally across those channels, including sourcing, procurement and fulfilment, and the conduct of business intelligence, including reporting, cross-entity business analytics, and business decision support, none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access are included in the broad category of, or overlap with, or include as a broader catergory the opponent’s computer software. Therefore, they are identical.

Contested services in Class 35

The contested advertising consultancy; advertising and promotion services and related consulting; advertising consultation; marketing consulting, none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access are included in the broad category of the opponent’s advertising services. Therefore, they are identical.

The contested data processing, none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access is included in the broad category of the opponent’s database management. Therefore, they are identical.

As a general rule, business administration services are performed to organise and run a business, whereas business management follows a higher level approach aimed at setting the common goals and the strategic plan for a commercial enterprise. Consequently, the contested business management consultancy; assistance, advisory services and consultancy with regard to business planning, business analysis, business administration; business management, and business organization; business consultation services; business management and organization consultancy, business management assistance, all related to conducting of e-commerce and m-commerce business, online sales and business on e-commerce and m-commerce software platforms; business management assistance relating to e-commerce and m-commerce business and multiple e-commerce and m-commerce platform growth; information, advisory and consultancy services relating to business and management or business administration, including such services provided on line or via the internet; administration of the business affairs of retail stores for others and management of retail enterprises for others; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access and the opponent’s business administration are identical (e.g. as regards the contested administration of the business affairs of retail stores for others, which is included in the broad category of business administration) or at least similar, since the purpose of the services, the relevant public and the provider may be the same.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested online retail store featuring downloadable computer software for creation, management and development of web sites, e-commerce and m-commerce platform management and e-commerce and m-commerce solutions, web content management and portal solutions; retail services and online retail services in relation to computer programs, computer software, downloadable computer software, computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce, computer software for carrying out e-commerce and m-commerce and providing e-commerce and m-commerce solutions, computer software for multiple online e-commerce and m-commerce platform management, computer software for tracking and managing orders, inventory, returns and sales, computer software for the creation, management and development of web sites, computer software for web content management, computer software for web portal solutions, computer software for e-commerce and m-commerce business planning, computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce, computer software for use in online retail services, computer software for business management and decision support, computer software for business accounting, computer software for customer relationship management, computer software for electronic data integration, computer software for enterprise resource planning, computer software for online advertising and marketing, computer software for online shopping and sales and business-to business applications, software tools for business analysis, software, none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access are similar to a low degree to the opponent’s computer software.

The contested online business process automation software, computer software for supply chain management and logistics, computer software for warehouse management, computer software for e-fulfilment, computer software for accounting services, namely, bookkeeping, invoice processing, payment processing, billing and reporting of debt collection, computer software applications to enable the implementation, operation, hosting and maintenance of electronic commerce across multi-platform electronic commerce channels, the conduct of business globally across those channels, including sourcing, procurement and fulfilment, and the conduct of business intelligence, including reporting, cross-entity business analytics, and business decision support; consultancy, information and advisory services to the aforesaid services; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access are similar to a low degree to the opponent’s computer software in Class 9. These services can have the same purposes, methods of use and providers. Moreover, they have similar natures.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar.

These services are also dissimilar to the opponent’s services in Classes 35, 38 and 42, and the purposes and methods of use of these services are different. They do not have the same providers/producers or distribution channels and they are not in competition.

Contested services in Class 38

The contested telecommunications services and data communication services; telecommunications services, namely, the electronic transmission of data and information; provision of on-line communications services; communications via a global computer network or the Internet; sending information and computer programs via telecommunication services, including on-line services; electronic data exchange services; remote data access services, none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

The contested provision of access to web pages; transmission and distribution of data or audio visual images via a global computer network or the Internet providing access to computer databases; providing access to portals on the Internet; computerised on-line services for business professionals namely providing access via global and non-global computer networks to computer software for enterprise resource planning and use in storing, managing, tracking and analysing data in the fields of e-commerce and m-commerce; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access overlap with or are included in the broad category of the opponent’s providing user access to the Internet. Therefore, they are identical.

Contested services in Class 42

The contested design and development of computer software, software applications and application programming interfaces, but not in relation to aircraft transportation and/or travel; development, design and provision of programs and databases that provide business and financial management over computer networks and the Internet, but not in relation to aircraft transportation and/or travel; computer software design services, but not in relation to aircraft transportation and/or travel; database design services, but not in relation to aircraft transportation and/or travel; computer network design for others; programming and software design; software design for others; software design, programming, or maintenance of software; design of home pages, software and web sites; design, development and implementation of software; providing a website featuring technical information relating to computer software provided; consultancy, information and advisory services to all the aforesaid services, but not in relation to aircraft transportation and/or travel; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access are at least similar to the opponent’s design, drawing and commissioned writing, all for the compilation of web pages on the Internet; updating and design of computer software. All the services concern computer- and internet-related services, which are offered by the same companies and target the same customers. They have the same natures, purposes and distribution channels. Some of the services are complementary to each other.

The contested consulting and technical support services in the field of design and use of computer programs, computer software and databases; computer and technical consultancy support services including troubleshooting; consultancy, information and advisory services to all the aforesaid services, but not in relation to aircraft transportation and/or travel; electronic data storage; hosting of portals on the internet; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access, which fall into the category of advisory and consultancy services, are at least similar to an average degree to the opponent’s information, advisory and consultancy services relating to business and management or business administration, including such services provided on line or via the internet covered by the earlier mark, since they have the same distribution channels and usual origins and target the same relevant public.

The contested platform as a service (PAAS) featuring computer software platforms to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; software as a service (SaaS) featuring computer software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce; hosting, managing, developing, analyzing, and maintaining applications, software, and web sites, of others in the fields of e-commerce and m-commerce, electronic data integration (EDI), enterprise resource planning (ERP), online advertising and business-to-business applications; software-as-a-service (SaaS) for online business process automation software applications for the consolidation of business and financial data; SaaS for use in the field of enterprise resource planning (ERP) including accounting, payroll, on-line bill paying, e-procurement, employee time and billing and expense reporting, financial management, business management, customer support, and office and business productivity, business, finance, purchasing, sales, human resources, manufacturing, sourcing, and information technology infrastructure, supply chain management, and logistics; SaaS for use in the field of customer relationship management (CRM), in the nature of contact management, sales force automation, commission and quota management, marketing, partner relationship management, customer service and support; SaaS for use in the field of electronic commerce, in the nature of providing a platform for others that enable the implementing, operating, hosting and maintaining of e-commerce and m-commerce web sites, and the conduct of business across those electronic commerce web sites; SaaS for use in business intelligence, including reporting, business analytics, and decision support; software-as-a-service (SaaS) and platform-as-a-service (PaaS) featuring computer software and on-demand applications that enable the implementation, operation, hosting and maintenance of e-commerce and m-commerce solutions across multiple e-commerce and m-commerce platforms including sourcing, procurement and fulfilment, and the conduct of business intelligence; software as a service (SaaS) services featuring software for human resources management, software for content management, software to allow users to perform electronic business transactions in the field of e-commerce and m-commerce, and software for use by others in business management; debugging, maintenance and updating of computer software; providing temporary use of non-downloadable software applications, development platforms and development tools that enable software developers to program and build developer software applications that work in conjunction with such non-downloadable software applications, non-downloadable e-commerce software to conduct electronic and mobile business; software-as-a-service (SaaS) featuring computer software for accounting services, namely, bookkeeping, invoice processing, billing and reporting of debt collection; software-as-a-service (SaaS) featuring computer software for global business management, namely, preparing business reports, expense report processing, purchase order processing, knowledge management, creating business proposals, project management, contact management and form and calendar generation; software-as-a-service (SaaS) featuring computer software for global personnel management, namely, time keeping, time sheet processing, attendance tracking and resource management, namely, evaluating the availability of personnel; computer services, namely, providing temporary use of a non-downloadable software engine for core accounting functions, hosting and maintaining an on-line web site for others to maintain e-commerce and m-commerce application and facilitate electronic business transactions, and implementing network web pages for others; computer consulting services in the field of design, implementation and use of e-commerce and m-commerce software systems for others; providing computer software support and consulting services, technical support services, troubleshooting in the nature of diagnosing and repairing computer software problems; technical support services, namely, troubleshooting of e- commerce software problems; and technical support services in setting up e-commerce and m-commerce stores, namely, troubleshooting the implementation and use of computer e-commerce and m-commerce software systems; consultancy, information and advisory services to all the aforesaid services, but not in relation to aircraft transportation and/or travel; none of the foregoing in relation to building security or building access or in relation to devices for building security and/or building access are similar (to between an average and a high degree) to the opponent’s information, advisory and consultancy services relating to business and management or business administration, including such services provided on line or via the internet because they are provided by the same consultants or IT undertakings and offered through the same distribution channels, and the services are often complementary.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of some of the goods and services, their price and degree of sophistication and the frequency of purchase.

3. 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).

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘AUTO’ is 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 is a figurative mark, composed of the word element ‘AUTOVOLO’, with the letters ‘AUTO’ in purple and the remaining letters in pink, and all preceded by a figurative element comprising two opposed triangles, one in purple and the other in pink. The earlier mark does not have any dominant elements.

As regards the earlier mark, although it contains 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). In this case, the element ‘AUTO’ will be recognised by the relevant public, due to its meaning, and also due to the colours that have been used to depict ‘AUTO’ on one hand, and ‘VOLO’ on the other hand.

The element ‘AUTO’ can have various meanings for the relevant public. It might be defined as a short form of the word ‘automobile’ or of ‘automatic’. Whatever the meaning the relevant public will attribute to the word ‘AUTO’, bearing in mind the relevant goods and services, the element is considered to be rather weak for such goods and services, as it may be perceived as a reference to the object of the goods and services and therefore to ‘automobile’. In any event, the additional word ‘VOLO’ has no meaning for the relevant public and therefore is the distinctive verbal element of the earlier mark. Consequently, the word ‘AUTO’ has less impact on the overall impression of the sign.

Moreover, the earlier sign is composed of verbal elements and figurative elements of a purely decorative nature. When signs consist of both verbal and figurative components, 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). Therefore, the verbal element ‘VOLO’ is the element of the earlier mark that has more impact.

The contested mark is a figurative mark consisting of the word element ‘VOLO’ in stylised upper case letters. The contested sign has no meaning for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in the letters ‘VOLO’, which constitute the sole element of the contested mark and make up the more distinctive element of the earlier mark. However, they differ in the additional elements of the earlier mark, which are the figurative element of two triangles, the word ‘AUTO’ and the colours used. As mentioned above, these elements have less impact on the overall impression of the sign, and the relevant public will pay more attention to the more distinctive element, ‘VOLO’.

Therefore, the signs are visually similar to an average degree, as visually the signs coincide in the letters ‘VOLO’.

Aurally, the signs are similar to the extent that the word ‘VOLO’ is identically reproduced in both signs. The pronunciation of the earlier sign clearly differs in the sound of the additional word ‘AUTO’, which is a weak element; however, as mentioned above, consumers will focus their attention on the more distinctive element, ‘VOLO’.

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. As the contested sign has no meaning in the relevant territory, one of the signs will not be associated with any meaning, and therefore the signs are not conceptually similar. However, the conceptual difference is due to the presence of a weak element in the earlier mark.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, §22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or 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).

The goods and services are partly identical, partly similar to different degrees and partly dissimilar, and the conflicting signs are visually and aurally similar to an average degree, as stated above in section c) of this decision. In particular, the only element of the contested mark is completely included in the earlier mark, albeit differently stylised.

The element ‘AUTO’ of the earlier sign and its figurative elements have less impact on the overall impression of the sign due to their weak character.

Therefore, in an overall assessment, it is reasonable to find that a substantial part of the public, even when displaying a higher than average degree of attention, when encountering the contested sign in relation to identical or similar goods and services is likely to confuse the marks or believe that the goods and services in question are from the same undertaking or, as the case may be, economically linked undertakings. This is true even with regard to the goods and services found to be similar to a low degree.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 identical or similar to different degrees 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.

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

Ferenc GAZDA

Cristina CRESPO MOLTO

Zuzanna STOJKOWICZ

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.