Allegra | Decision 2782244

OPPOSITION DIVISION
OPPOSITION No B 2 782 244
Cadence Design Systems Inc., 2655 Seely Avenue, San Jose, California 95134,
United States of America (opponent), represented by Fish & Richardson P.C.,
Highlight Business Towers, Mies-van-der-Rohe-Str. 8, 80807 München, Germany
(professional representative)
a g a i n s t
Axel Springer SE, Axel-Springer-Str. 65, 10969 Berlin, Germany (applicant),
represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62,
50674 Köln, Germany (professional representative).
On 04/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 782 244 is partially upheld, namely for the following
contested goods and services:
Class 9: Recorded and unrecorded sound, image and data carriers (except
unexposed films); media content; recorded content; magnetic data
carriers; compact discs, DVDs and other digital recording media;
USB flash drives; apparatus for recording, transmitting or
reproduction of sounds, images or data; apparatus for interactive
television, calculating machines; hardware; data processing
apparatus; computers; computer programs and software (recorded
and/or downloadable); electronic publications, downloadable;
downloadable sound and/or image files; apps (software), namely
applications for smartphones, tablet PCs, e-readers and other
mobile or stationery it devices (downloadable); information
technology and audiovisual equipment; parts and accessories for
all the aforesaid goods, included in this class.
Class 16: Printed matter, in particular newspapers, periodicals, magazines,
books, prospectuses, pamphlets, programmes, leaflets, press kits,
posters, placards, transparencies, tickets; stationery; instructional
and teaching materials (not apparatus); voucher books, unencoded
tokens and prepaid cards of cardboard and/or paper, including
coated with plastic; parts and accessories for all the aforesaid
goods, included in this class.
Class 28: Games and playthings.
Class 38: Telecommunications; Providing of access to information, text,
drawings and images on the internet; Providing of portals, blogs,
forums, chat rooms and chat lines on the internet; News agencies;
Providing of access to computer programs on data networks;
Providing user access to global computer networks; Computer
aided transmission of messages and images; Electronic mail;
Compilation and supply of news and general news information,
Decision on Opposition No B 2 782 244 page: 2 of 16
including being electronic (news agencies); Providing access to
information on the Internet; Providing access to databases;
Broadcasting and retransmission of film, television, radio, BTX,
videotext, teletext and online programmes or broadcasts;
Transmission of digital image files; Message sending (editorial and
advertising content); Provision of portals on the Internet; Video
and/or audio streaming (continuous real-time transmission of video
and/or audio streams on computer networks); Rental of objects in
connection with the providing of the aforesaid services, included in
this class; Consultancy and information in relation to the aforesaid
services, included in this class.
Class 41: Training, education; providing of training; entertainment; publication
of printed matter and publications (except for advertising purposes);
online publications (non-downloadable); providing electronic
publications, not downloadable; editing websites, namely editing
texts for publication on the internet; writing and publication of texts
(except publicity texts); publishing services, except printing; news
reporters services; advisory, consultancy and information services
in relation to the aforesaid.
Class 42: Computer programming; graphic design services; design of
advertising space on the internet; creation, care, rental,
maintenance and installation of software; providing or rental of
electronic memory space on the internet (webspace); providing
platforms on the internet; layout and design of homepages and
websites; provision of search engines for the internet; rental of web
servers; rental of computers and computer software; digital image
processing (graphic design); information technology, computer
programming, product design and industrial design, design, graphic
design; rental of software for internet access; electronic data
storage; hosting of digital content, namely blogs; rental of objects in
connection with the providing of the aforesaid services, included in
this class; consultancy and information in relation to the aforesaid
services, included in this class.
2. European Union trade mark application No 15 367 378 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services.
3. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 782 244 page: 3 of 16
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 15 367 378 for the figurative mark
, namely against all the goods and services in Classes 9, 16, 28,
35, 38, 41, 42 and 45. The opposition is based on European Union trade mark
registration No 355 487, for the word mark ‘ALLEGRO’. 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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Data processing equipment, computers, computer peripherals, magnetic,
optical and magneto-optical data carriers; computer programs in human and
machine readable form for use in applications pertaining to the design of printed
circuit boards and the design of electronic products.
Class 16: Printed materials, namely books, manuals, customer news letters, the
aforementioned goods exclusively concerning computer software having applications
relative to the design of printed circuit boards and the design of electronic products.
Class 42: Computer programming relating to computer software having applications
in the design of printed circuit boards and the design of electronic products.
The contested goods and services are the following:
Class 9: Recorded and unrecorded sound, image and data carriers (except
unexposed films); Media content; Recorded content; Magnetic data carriers;
Compact discs, DVDs and other digital recording media; USB flash drives; Apparatus
for recording, transmitting or reproduction of sounds, images or data; Apparatus for
interactive television, calculating machines; Hardware; Data processing apparatus;
Computers; Computer programs and software (recorded and/or downloadable);
Electronic publications, downloadable; Downloadable sound and/or image files; Apps
(software), namely applications for smartphones, tablet PCs, e-readers and other
mobile or stationery IT devices (downloadable); Telephone ring tones
[downloadable]; Information technology and audiovisual equipment; 3-D glasses;
Spectacles [optics]; Sunglasses; Spectacle cases; Parts and accessories for all the
aforesaid goods, included in this class.
Decision on Opposition No B 2 782 244 page: 4 of 16
Class 16: Printed matter, in particular newspapers, periodicals, magazines, books,
prospectuses, pamphlets, programmes, leaflets, press kits, posters, placards,
transparencies, tickets; Bookbinding material; Photographs; Stationery; Instructional
and teaching materials (not apparatus); Voucher books, unencoded tokens and
prepaid cards of cardboard and/or paper, including coated with plastic; Office
requisites (except furniture); Artists’ materials; Plastic materials for packaging (not
included in other classes); Adhesives for stationery or household purposes; Paint
brushes; Typewriters; Printers’ type; Printing blocks; Paper cardboard; Works of art
and figurines of paper and cardboard, and architects’ models; Filtering materials of
paper; Bags and articles for packaging, wrapping and storage of paper, cardboard or
plastics; Stationery and educational supplies; Disposable paper products; Parts and
accessories for all the aforesaid goods, included in this class.
Class 28: Games and playthings; Gymnastic and sporting articles; Decorations for
Christmas trees.
Class 35: Advertising; Marketing services; Marketing of advertising; Public relations;
Arranging advertising time in all relevant media; Planning and conducting of
advertising initiatives in media of all kinds; Development and creation of materials for
advertising and marketing; Development and creation of advertising spaces;
Development of advertising concepts; Arranging for advertising space; Creation,
updating and rental of advertising space on the internet; Banner exchange; Providing
of information in the field of marketing and advertising in oral and written form,
including by means of print media and electronic media; Organisational consultancy
in the field of marketing and advertising; Marketing studies; Market analysis;
Advertising research; Opinion polling; Computerised file management; Collating,
systematisation and compiling of data in computer databases; Attracting customers
and customer care by means of mailing and distribution of goods for advertising
purposes; Dissemination of advertising matter; Bill-posting; Direct mail advertising;
Publication of printed matter (including in electronic form), for advertising purposes;
Sales promotion; Updating of data content in computer databases; Production of
advertising material; Arranging contracts, for others, for the buying and selling of
goods and the providing of services; arranging commercial transactions for third
parties, also within the framework of e-commerce; Price calculation for goods and
services; Conducting of competitions and prize games for advertising purposes;
Production of lottery, television, radio and Internet commercials; Presentation of
companies on the Internet and other media; Arranging of subscriptions to
newspapers and periodicals, for others; Business management; Business
administration; Office functions; Business consultancy and advisory services;
Organisational consultancy; Business management and organization consultancy;
Business organisation consulting; Professional business consulting; Rental of objects
in connection with the providing of the aforesaid services, included in this class;
Consultancy and information in relation to the aforesaid services, included in this
class.
Class 38: Telecommunications; Providing of access to information, text, drawings
and images on the internet; Providing of portals, blogs, forums, chat rooms and chat
lines on the internet; News agencies; Providing of access to computer programs on
data networks; Providing user access to global computer networks; Computer aided
transmission of messages and images; Electronic mail; Compilation and supply of
news and general news information, including being electronic (news agencies);
Providing access to information on the Internet; Providing access to databases;
Broadcasting and retransmission of film, television, radio, BTX, videotext, teletext
and online programmes or broadcasts; Transmission of digital image files; Message
sending (editorial and advertising content); Provision of portals on the Internet; Video
Decision on Opposition No B 2 782 244 page: 5 of 16
and/or audio streaming (continuous real-time transmission of video and/or audio
streams on computer networks); Rental of objects in connection with the providing of
the aforesaid services, included in this class; Consultancy and information in relation
to the aforesaid services, included in this class.
Class 41: Training, education; Providing of training; Entertainment; Publication of
printed matter and publications (except for advertising purposes); Online publications
(non-downloadable); Providing electronic publications, not downloadable; Editing
websites, namely editing texts for publication on the Internet; Writing and publication
of texts (except publicity texts); Photography; Publishing services, except printing;
News reporters services; Photographic reporting; Awarding of prizes for cultural
purposes; Arranging of prize competitions and prize games and conducting of
games; Development, design and production of film, television and radio
programmes and broadcasts; Development, design and production of internet
broadcasts; Development of internet programmes, design and production of internet
programmes in connection with education, entertainment, culture or sport;
Organising and arranging of holiday courses; Sporting and cultural activities;
Arranging of exhibitions, workshops (training), forums and congresses; advisory,
consultancy and information services in relation to the aforesaid.
Class 42: Computer programming; Programmable electronic Internet, television and
radio programme guides; Graphic design services; Design of advertising space on
the Internet; Creation, care, rental, maintenance and installation of software; Server
administration; Providing or rental of electronic memory space on the Internet
(webspace); Providing platforms on the Internet; Layout and design of homepages
and websites; Provision of search engines for the Internet; Rental of web servers;
Rental of computers and computer software; Digital image processing (graphic
design); Information technology, computer programming, architecture, interior design,
product design and industrial design, design, graphic design; Rental of software for
Internet access; Electronic data storage; Hosting of digital content, namely blogs;
Statistical analysis of central databases for marketing studies and advertising
purposes (data mining); Rental of objects in connection with the providing of the
aforesaid services, included in this class; Consultancy and information in relation to
the aforesaid services, included in this class.
Class 45: Licensing of industrial property rights and copyright; Management of
industrial property rights and copyright; Issuing licences for franchising concepts;
Copyright management; Monitoring intellectual property rights for legal advisory
purposes; Licensing of computer software [legal services]; Allocating and registering
of domain names; Legal consultancy with regard to franchising concepts; Film,
television and video licensing; Contract negotiation in relation to rights to films,
television and radio productions and other video and audio programmes, and of print
media and other printed products; Providing of social networks on the internet;
Rental and leasing of objects in connection with the providing of the aforesaid
services, included in this class; Consultancy and information in relation to the
aforesaid services, included in this class.
The terms ‘in particular and ‘including’, used in the applicant’s list 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,
they introduce a non-exhaustive list of examples (on the use of in particular’, which
has the same function as ‘including’, see a reference in 09/04/2003, T-224/01,
Nu-Tride, EU:T:2003:107).
Decision on Opposition No B 2 782 244 page: 6 of 16
However, the terms ‘namely’ and ‘exclusively’, used in the applicant’s list and in the
opponent’s list of goods and services to show the relationship of individual goods and
services to a broader category, are exclusive and restrict the scope of protection only
to the goods and services specifically listed.
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
Computers; magnetic data carriers are identically contained in both lists of goods.
The contested recorded and unrecorded data carriers (except unexposed films);
compact discs, DVDs and other digital recording media; USB flash drives are
included in the broad categories of, or overlap with, the opponent’s magnetic, optical
and magneto-optical data carriers. Therefore, they are identical.
The contested apparatus for recording, transmitting or reproduction of sounds,
images or data; apparatus for interactive television, calculating machines; hardware;
data processing apparatus; information technology and audiovisual equipment are
included in the broad categories of, or overlap with, the opponent’s data processing
equipment. Therefore, they are identical.
The contested recorded content; computer programs and software (recorded and/or
downloadable); apps (software), namely applications for smartphones, tablet PCs, e-
readers and other mobile or stationery IT devices (downloadable) are identical to the
opponent’s computer programs in human and machine readable form for use in
applications pertaining to the design of printed circuit boards and the design of
electronic products, because the opponent’s goods include, are included in or
overlap with the contested goods.
The contested computers; magnetic data carriers; (parts and accessories for all the
aforesaid goods, included in this class) are similar to the opponent’s computers;
magnetic data carriers. They have the same producers and the same distribution
channels. They can also be complementary.
The contested recorded and unrecorded data carriers (except unexposed films);
compact discs, DVDs and other digital recording media; USB flash drives; (parts and
accessories for all the aforesaid goods, included in this class) are similar to the
opponent’s magnetic, optical and magneto-optical data carriers. It is common for
those parts and accessories to be produced by the same company and distributed
through the same channels of trade. Moreover, the goods can have the same end
users and be complementary.
The contested apparatus for recording, transmitting or reproduction of sounds,
images or data; apparatus for interactive television, calculating machines; hardware;
data processing apparatus; information technology and audiovisual equipment;
(parts and accessories for all the aforesaid goods, included in this class) are similar
to the opponent’s data processing equipment. They have the same producers and
the same distribution channels. Moreover, they can be complementary.
The contested electronic publications, downloadable are similar to the opponents
computer programs in human and machine readable form for use in applications
Decision on Opposition No B 2 782 244 page: 7 of 16
pertaining to the design of printed circuit boards and the design of electronic
products, as the contested goods can be electronic publications on the design of
printed circuit boards and the design of electronic products. Consequently, they can
have the same producers, end users and distribution channels. Furthermore, they
are complementary.
The contested recorded and unrecorded sound, image (except unexposed films);
downloadable sound and/or image files are similar to a low degree to the opponent’s
computer programs in human and machine readable form for use in applications
pertaining to the design of printed circuit boards and the design of electronic
products. The contested files can be related to the opponent’s specific goods;
therefore, they can have the same end users and distribution channels. Furthermore
they are complementary.
The contested telephone ring tones [downloadable]; 3-D glasses; spectacles [optics];
sunglasses; spectacle cases; parts and accessories for all the aforesaid goods,
included in this class are dissimilar to all the opponent’s goods and services. The
opponent’s goods and services are specific computer-related goods and services and
printed matter for a specific purpose. There is no link with those contested goods,
and they do not have the same purpose, distribution channels or producer. They are
not in competition or complementary.
Contested goods in Class 16
The contested printed matter, in particular newspapers, periodicals, magazines,
books, prospectuses, pamphlets, programmes, leaflets, press kits, posters, placards,
transparencies, tickets; instructional and teaching materials (not apparatus); parts
and accessories for all the aforesaid goods, included in this class are identical to the
opponent’s printed materials, namely books, manuals, customer news letters, the
aforementioned goods exclusively concerning computer software having applications
relative to the design of printed circuit boards and the design of electronic products,
because the opponent’s goods include, are included in or overlap with the contested
goods.
The contested voucher books; parts and accessories for all the aforesaid goods,
included in this class are similar to the opponent’s books, as a voucher book can
contain tokens for the design of electronic products. They can have the same
producers, end users and distribution channels and they have the same nature.
The contested stationery; paper cardboard are similar to a low degree to the
opponent’s printed materials, namely books, manuals, customer news letters, the
aforementioned goods exclusively concerning computer software having applications
relative to the design of printed circuit boards and the design of electronic products,
as they can have the same end users and distribution channels.
The contested unencoded tokens and prepaid cards of cardboard and/or paper,
including coated with plastic; parts and accessories for all the aforesaid goods,
included in this class are similar to a low degree to the opponent’s customer news
letters. It is perfectly conceivable that the newsletter is sent with tokens or a prepaid
card to award a loyal customer, for instance. Therefore, they can have the same
distribution channels and end users.
The contested photographs are dissimilar to the opponent’s goods and services in
Classes 9, 16 and 42. The opponent’s goods and services in Classes 9 and 42 are
computers and related to computers. Therefore, those goods and services and the
Decision on Opposition No B 2 782 244 page: 8 of 16
contested goods have different purposes, methods of use, distribution channels and
producers/providers. Moreover, they are not in competition or complementary. The
opponent’s goods in Class 16 are books, manuals and customer newsletters on a
specific topic: computer software with applications that relate to the design of printed
circuit boards and of electronic products. Therefore, those goods and the contested
goods have different purposes, distribution channels and producers. They are not in
competition or complementary.
The contested adhesives for stationery or household purposes; office requisites
(except furniture); printing blocks; stationery and educational supplies are dissimilar
to the opponent’s goods and services in Classes 9, 16 and 42 because they do not
have the same purpose, method of use or distribution channels. They are not in
competition or complementary.
The contested bookbinding material; artists’ materials; filtering materials of paper;
disposable paper products; paint brushes; works of art and figurines of paper and
cardboard, and architectsmodels; plastic materials for packaging (not included in
other classes); bags and articles for packaging, wrapping and storage of paper,
cardboard or plastics are dissimilar to the opponent’s goods and services in
Classes 9, 16 and 42. The opponent’s goods and services are specific computer-
related goods and services, and printed matter for a specific purpose. There is no link
between them and the contested goods, and they do not have the same purposes,
distribution channels or producers. They are not in competition or complementary.
Contested goods in Class 28
The contested games and playthings are similar to the opponent’s computers in
Class 9, as the contested goods include electronic games and devices for
computers. They can have the same producers, end users and distribution channels.
The contested gymnastic and sporting articles; decorations for Christmas trees are
dissimilar to the opponent’s goods and services in Classes 9, 16 and 42. The
opponent’s goods and services are specific computer-related goods and services and
printed matter for a specific purpose. There is no link with those contested goods,
and they do not have the same purposes, distribution channels or producers. They
are not in competition or complementary.
Contested services in Class 35
The opponent’s goods and services are specific computer-related goods and
services and printed matter for a specific purpose in relation to the design of printed
circuit boards and the design of electronic products.
Advertising services consist of providing others with assistance in the sale of their
goods and services by promoting their launch and/or sale, or of reinforcing a client’s
position in the market and acquiring competitive advantage through publicity. Many
different means and products can be used to fulfil this objective. These services are
provided by specialist companies, which study their client’s needs, provide all the
necessary information and advice for marketing the client’s goods and services, and
create a personalised strategy for advertising them through newspapers, websites,
videos, the internet, etc.
Advertising services are fundamentally different in nature and purpose from the
manufacture of goods or the provision of many other services. The fact that some
Decision on Opposition No B 2 782 244 page: 9 of 16
goods or services may appear in advertisements is insufficient for finding similarity.
Therefore, advertising is dissimilar to the goods or services being advertised.
The same applies to the comparison of advertising services with goods that can be
used as a medium for disseminating advertising, such as data carriers in Class 9,
and newsletters in Class 16. These goods and services are considered dissimilar.
The contested marketing services; marketing of advertising; arranging advertising
time in all relevant media; planning and conducting of advertising initiatives in media
of all kinds; development and creation of materials for advertising and marketing;
development and creation of advertising spaces; development of advertising
concepts; arranging for advertising space; creation, updating and rental of
advertising space on the internet; providing of information in the field of marketing
and advertising in oral and written form, including by means of print media and
electronic media; organisational consultancy in the field of marketing and advertising;
marketing studies; market analysis; advertising research; opinion polling; attracting
customers and customer care by means of mailing and distribution of goods for
advertising purposes; dissemination of advertising matter; bill-posting; direct mail
advertising; publication of printed matter (including in electronic form), for advertising
purposes; sales promotion; production of advertising material; arranging contracts,
for others, for the buying and selling of goods and the providing of services;
conducting of competitions and prize games for advertising purposes; presentation of
companies on the Internet and other media; arranging of subscriptions to
newspapers and periodicals, for others; public relations; banner exchange;
production of lottery, television, radio and Internet commercials; arranging
commercial transactions for third parties, also within the framework of e-commerce;
rental of objects in connection with the providing of the aforesaid services, included
in this class; consultancy and information in relation to the aforesaid services,
included in this class are related to advertising services, as they are specific services
for advertising. Therefore, the same reasoning applies, they are dissimilar to the
opponent’s list of goods and services.
Business management services are usually rendered by specialist companies such
as business consultants. These companies gather information and provide tools and
expertise to enable their customers to carry out their business or provide businesses
with the necessary support to acquire, develop and expand market share. The
services include activities such as business research and assessments, cost and
price analyses, organisational consultancy and any consultancy, advisory and
assistance activity that may be useful in the management of a business, such as
advice on how to efficiently allocate financial and human resources, improve
productivity, increase market share, deal with competitors, reduce tax bills, develop
new products, communicate with the public, market products, research consumer
trends, launch new products, create a corporate identity, etc. Therefore, business
management is dissimilar to all the opponent’s goods and services.
The contested office functions; business administration; business consultancy and
advisory services; organisational consultancy; business management and
organization consultancy; business organisation consulting; professional business
consulting; price calculation for goods and services; rental of objects in connection
with the providing of the aforesaid services, included in this class; consultancy and
information in relation to the aforesaid services, included in this class are services
related to business management. Therefore, the same reasoning applies and those
services are dissimilar to the opponent’s goods and services in Classes 9, 16 and 42.
Decision on Opposition No B 2 782 244 page: 10 of 16
The contested computerised file management; collating, systematisation and
compiling of data in computer databases; updating of data content in computer
databases; rental of objects in connection with the providing of the aforesaid
services, included in this class; consultancy and information in relation to the
aforesaid services, included in this class are services targeting businesses that need
support in managing their computerised files. They do not have the same purpose,
distribution channels or providers as the opponent’s goods and services. They are
not in competition or complementary. Therefore, they are dissimilar.
Contested services in Class 38
The contested telecommunications; rental of objects in connection with the providing
of the aforesaid services, included in this class; consultancy and information in
relation to the aforesaid services, included in this class are similar to the opponent’s
computers, as they have the same purpose. They can have the same end users and
distribution channels. Furthermore, they are complementary.
The contested providing of access to information, text, drawings and images on the
internet; providing of portals, blogs, forums, chat rooms and chat lines on the
internet; news agencies; providing of access to computer programs on data
networks; providing user access to global computer networks; computer aided
transmission of messages and images; electronic mail; compilation and supply of
news and general news information, including being electronic (news agencies);
providing access to information on the internet; providing access to databases;
broadcasting and retransmission of film, television, radio, BTX, videotext, teletext and
online programmes or broadcasts; transmission of digital image files; message
sending (editorial and advertising content); provision of portals on the internet; video
and/or audio streaming (continuous real-time transmission of video and/or audio
streams on computer networks); rental of objects in connection with the providing of
the aforesaid services, included in this class; consultancy and information in relation
to the aforesaid services, included in this class are all specific telecommunication
services. Therefore, the same reasoning applies. Therefore, they are similar to the
opponent’s computers.
Contested services in Class 41
The contested training, education; providing of training; advisory, consultancy and
information services in relation to the aforesaid are similar to the opponent’s printed
materials, namely manuals, the aforementioned goods exclusively concerning
computer software having applications relative to the design of printed circuit boards
and the design of electronic products. The contested services can be provided to
teach how to design electronic products, for example. Consequently, the contested
services and the opponent’s goods can have the same distribution channels and end
users. They can also be complementary.
The contested publication of printed matter and publications (except for advertising
purposes); advisory, consultancy and information services in relation to the aforesaid
are similar to the opponent’s printed materials, namely books, the aforementioned
goods exclusively concerning computer software having applications relative to the
design of printed circuit boards and the design of electronic products, as the
contested services can be related to the design of electronic products. The goods
and services can have the same providers. They are also complementary.
The contested online publications (non-downloadable); providing electronic
publications, not downloadable; editing websites, namely editing texts for publication
Decision on Opposition No B 2 782 244 page: 11 of 16
on the internet; writing and publication of texts (except publicity texts); news
reporters services, publishing services, except printing; advisory, consultancy and
information services in relation to the aforesaid are similar to the opponent’s
computer programs in human and machine readable form for use in applications
pertaining to the design of printed circuit boards and the design of electronic
products, as they have the same purpose. They can have the same producers and
end users, as the contested services can be related to the design of printed circuit
boards or the design of electronic products.
The contested organising and arranging of holiday courses; arranging of exhibitions,
workshops (training), forums and congresses; advisory, consultancy and information
services in relation to the aforesaid are related to the organisation of events.
Therefore, those services and the opponent’s goods and services do not have the
same purpose, distribution channels, providers/producers or end users. Moreover,
they are not in competition or complementary. There is no link between those
contested services and the opponent’s goods and services in Classes 9, 16 and 42.
Therefore, they are dissimilar.
The contested entertainment; awarding of prizes for cultural purposes; arranging of
prize competitions and prize games and conducting of games; advisory, consultancy
and information services in relation to the aforesaid are related to entertainment and
leisure. Those services and the opponent’s goods and services do not have the same
purpose, distribution channels, providers/producers or end users. Moreover, they are
not in competition or complementary. There is no link between those contested
services and the opponent’s list of goods and services in Classes 9, 16 and 42.
Therefore, they are dissimilar.
The contested photography; photographic reporting; advisory, consultancy and
information services in relation to the aforesaid are specific services relating to the
activity of taking photographs or filming. They do not have the same purpose, end
users or distribution channels. Moreover, they are not in competition or
complementary. Therefore, they are dissimilar to the opponent’s goods and services
in Classes 9, 16 and 42.
The contested development, design and production of film, television and radio
programmes and broadcasts; development, design and production of internet
broadcasts; development of internet programmes, design and production of internet
programmes in connection with education, entertainment, culture or sport; sporting
and cultural activities; advisory, consultancy and information services in relation to
the aforesaid are specific services with no link with the opponent’s goods and
services. Therefore, they are dissimilar.
Contested services in Class 42
The contested computer programming (listed twice) includes, as a broader category,
the opponent’s computer programming relating to computer software having
applications in the design of printed circuit boards and the design of electronic
products. Since the Opposition Division cannot dissect ex officio the broad category
of the contested services, they are considered identical to the opponent’s services.
The contested computer software includes, as a broader category, the opponent’s
computer programming relating to computer software having applications in the
design of printed circuit boards and the design of electronic products. Therefore, they
are identical.
Decision on Opposition No B 2 782 244 page: 12 of 16
Information technology is the application of computers and telecommunications
equipment to store, retrieve, transmit and manipulate data. In its broadest sense, IT
refers to anything related to computing technology, such as networking, hardware,
software, the internet or the people who work with these technologies. Therefore, the
contested information technology; rental of objects in connection with the providing of
the aforesaid services, included in this class; consultancy and information in relation
to the aforesaid services, included in this class include, as a broader category, the
opponent’s computer programming relating to computer software having applications
in the design of printed circuit boards and the design of electronic products. Since the
Opposition Division cannot dissect ex officio the broad category of the contested
services, they are considered identical to the opponent’s services.
The contested creation of software; rental of objects in connection with the providing
of the aforesaid services, included in this class; consultancy and information in
relation to the aforesaid services, included in this class include, as a broader
category of the opponent’s computer programming relating to computer software
having applications in the design of printed circuit boards and the design of electronic
products. Since the Opposition Division cannot dissect ex officio the broad category
of the contested services, they are considered identical to the opponent’s services.
The contested rental of computers; care, rental, maintenance and installation of
software; rental of objects in connection with the providing of the aforesaid services,
included in this class; consultancy and information in relation to the aforesaid
services, included in this class are highly similar to the opponent’s computer
programming relating to computer software having applications in the design of
printed circuit boards and the design of electronic products. They have the same
providers, distribution channels and end users. They are closely related and
complementary.
The contested graphic design services; digital image processing (graphic design);
product design and industrial design, design, graphic design; rental of objects in
connection with the providing of the aforesaid services, included in this class;
consultancy and information in relation to the aforesaid services, included in this
class are highly similar to the opponent’s computer programming relating to
computer software having applications in design of electronic products. The opponent
creates computer programs that will allow the end users to design, for instance,
electronic products. Therefore, these specific services have the same providers and
purpose, and can have the same distribution channels. Moreover, they are
complementary.
The contested computer programming; computer software; (rental of objects in
connection with the providing of the aforesaid services, included in this class;
consultancy and information in relation to the aforesaid services, included in this
class) are similar to the opponent’s computer software having applications in the
design of printed circuit boards and the design of electronic products. They can have
the same end users, distribution channels and providers. Moreover, they can be
complementary.
The contested layout and design of homepages and websites; design of advertising
space on the internet; providing or rental of electronic memory space on the internet
(webspace); providing platforms on the internet; provision of search engines for the
internet; rental of web servers; rental of software for internet access; hosting of digital
content, namely blogs; rental of objects in connection with the providing of the
aforesaid services, included in this class; consultancy and information in relation to
the aforesaid services, included in this class are similar to the opponent’s computers
Decision on Opposition No B 2 782 244 page: 13 of 16
in Class 9, as they can have the same end users and distribution channels.
Furthermore, they are complementary.
The contested electronic data storage; rental of objects in connection with the
providing of the aforesaid services, included in this class; consultancy and
information in relation to the aforesaid services, included in this class are similar to
the opponent’s data processing equipment in Class 9, as they can have the same
producers, end users and distribution channels. Furthermore, they are
complementary.
The contested architecture, interior design; rental of objects in connection with the
providing of the aforesaid services, included in this class; consultancy and
information in relation to the aforesaid services, included in this class are dissimilar to
the opponent’s goods and services. The opponent’s goods and services are
specialised in computers and related to the design of printed circuit boards and
electronic products. Those have nothing in common with the abovementioned
contested services, which are related to buildings (building, decoration, etc.).
The contested programmable electronic internet, television and radio programme
guides; server administration; statistical analysis of central databases for marketing
studies and advertising purposes (data mining); rental of objects in connection with
the providing of the aforesaid services, included in this class; consultancy and
information in relation to the aforesaid services, included in this class are dissimilar to
the opponent’s goods and services in Classes 9, 16 and 42. They do not have the
same purpose, method of use or providers. Moreover, they are not in competition or
complementary.
Contested services in Class 45
The contested licensing of industrial property rights and copyright; management of
industrial property rights and copyright; issuing licences for franchising concepts;
copyright management; monitoring intellectual property rights for legal advisory
purposes; licensing of computer software [legal services]; allocating and registering
of domain names; legal consultancy with regard to franchising concepts; film,
television and video licensing; contract negotiation in relation to rights to films,
television and radio productions and other video and audio programmes, and of print
media and other printed products; providing of social networks on the internet; rental
and leasing of objects in connection with the providing of the aforesaid services,
included in this class; consultancy and information in relation to the aforesaid
services, included in this class are legal services or related to legal services (such as
contracts) and services for social networking. There is no link to the opponent’s
goods and services in Classes 9, 16 and 42, which include computers, computer-
related services and specific printed matter. Therefore, the contested services are
dissimilar to the opponent’s list.
b) 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.
Decision on Opposition No B 2 782 244 page: 14 of 16
In the present case, the goods and services found to be identical or similar are
directed at the public at large, as well as at business customers with specific
professional knowledge or expertise, in particular IT experts or business trade
professionals.
The public’s degree of attentiveness may vary from average to high, depending on
the price, specialised nature, or terms and conditions of the goods and services
purchased.
c) The signs
ALLEGRO
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 word elements ‘ALLEGRO and ‘ALLEGRA are not meaningful in certain
territories, for example in those countries where Italian is not understood.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the non-Italian-speaking part of the public such as France, Hungary and
Poland.
The earlier sign is a word mark, ‘ALLEGRO’. This element of the earlier mark has no
meaning for the relevant public and is, therefore, distinctive.
The contested sign is a figurative mark composed of the verbal element ‘ALLEGRA
written in handwriting in bold letters. The font in which the mark is presented is
neither especially fanciful nor memorable. The word element ‘ALLEGRA of the
contested sign has no meaning for the relevant public and is, therefore, distinctive.
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).
Decision on Opposition No B 2 782 244 page: 15 of 16
Visually, the signs coincide in the letters ‘ALLEGR*’.The signs differ only in their last
letters, ‘O’ in the earlier sign and ‘A in the contested sign, as well as the slight
stylisation of the contested sign. Therefore, the signs are highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the letters
‘ALLEGR*’, present identically in both signs. The pronunciation differs only in the
sound of the last letters, ‘O’ in the earlier sign and ‘A in the contested sign.
Therefore, the signs are highly similar.
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.
d) 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.
e) 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 found to be identical or similar to
different degrees are directed at the public at large and/or business consumers. The
signs are visually and aurally highly similar. The signs have no meaning for part of
the relevant public, therefore, the conceptual comparison does not influence the
assessment of a likelihood of confusion.
Decision on Opposition No B 2 782 244 page: 16 of 16
The only slight difference in the verbal elements of the signs is in their last letters, ‘O’
and ‘A’. This difference does not counteract the strong similarities of the signs due to
their identical first six letters out of seven.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public, such as consumers in France, Hungary and
Poland. Therefore, the opposition is partly well founded on the basis of the
opponent’s European Union trade mark registration. As stated above in section c) of
this decision, a likelihood of confusion for only part of the relevant public of the
European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be identical or similar to different degrees to those of the
earlier trade mark.
The rest of the contested goods and 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 goods and services cannot be
successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) 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 for only some 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
Benoit VLEMINCQ Cindy BAREL Steve HAUSER
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.

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