COLO | Decision 0011706
Date Published: May 1, 2018
CANCELLATION No 11 706 C (INVALIDITY)
CE Colo Czech s.r.o., Nad Elektrárnou 1428/47, 106 00 Prague 10, Czech Republic (applicant), represented by Čížek Hostaš advokátní kancelář, Na Struze 1740/7, 110 00 Prague 1, Czech Republic (professional representative)
a g a i n s t
Switch Evo Sarl, 1, boulevard de la Foire, 1528 Luxembourg, Luxembourg (EUTM proprietor), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative).
On 12/01/2017, the Cancellation Division takes the following
1. The application for a declaration of invalidity is upheld.
2. European Union trade mark No 12 843 546 is declared invalid in its entirety.
3. The EUTM proprietor bears the costs, fixed at EUR 1 150.
The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 12 843 546. The application is based on, inter alia, European Union trade mark registration No 10 370 153. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that there is a likelihood of confusion because the marks as well as the services are highly similar. The element ‘Colo’ in the earlier trade mark has no meaning whereas ‘CE’ is descriptive because it is an abbreviation for ‘Central Europe’.
The EUTM proprietor argues that the relevant public are professionals who will pay a high degree of attention when dealing with the services. The marks have visual and aural differences due the element ‘CE’. This different element is placed at the beginning of the earlier trade mark. ‘CE’ has no meaning and will not be perceived as an abbreviation for ‘Central Europe’. ‘CE’ is the most distinctive and dominant element of the earlier mark. ‘Colo’ is weak because it is allusive to the services. There is no likelihood of confusion.
In reply, the applicant reiterates its arguments on the similarity of the marks and the services. It also provides information about the applicant’s field of activities in the area of data centres (colocation facilities).
In its rejoinder, the EUTM proprietor repeats the arguments on the dissimilarities between the marks and the services.
LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s European Union trade mark registration No 10 370 153.
- The 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.
The services on which the application is based are the following:
Class 35: Business organization consultancy, business management and organization consultancy, marketing, advertising, publicity, marketing research, data search in computer files (for others), systemization of information into computer databases, compilation of information into computer databases.
Class 36: Leasing of real estate, real estate management.
Class 38: Telecommunications, communications by telephone, data communications services, mobile telecommunication network services, cellular radio telephone services, rental of telecommunication equipment, rental of message sending apparatus, consultancy and advisory services in the field of telecommunications, information about telecommunication, telecommunications routing and junction services, providing telecommunications connections to a global computer network, providing user access to a global computer network (service providers), communications by computer terminals, providing access to databases, rental of access time to global computer networks, rental of modems, communications by fiber (fibre) optic networks, providing internet chatrooms, electronic mail, transmission of electronic messages, data transmission services, provision of communications facilities for the interchange of electronic data.
Class 39: Storage of electronically-stored data or documents, physical storage of electronically-stored data or documents, rental of warehouses, storage information.
Class 42: Technical project studies in the in the field of telecommunications and computer hardware a software, computer software design, rental of computer software, creating and maintaining web sites for others, computer rental, consultancy and advice on computer hardware and software, maintenance of computer software, updating of computer software, hosting computer sites (web sites), installation of computer software, recovery of computer data, computer programming, computer systems analysis, rental of web servers, data conversion of computer programs and data (not physical conversion), computer virus protection services, computer system design, rental of computer hardware, rental of a database server (to third parties).
The contested services are the following:
Class 39: Services for powering of computer based systems, namely, servers, networks, infrastructure, hardware and software in a controlled and secure facility to increase the effectiveness, efficiency, longevity or sustainability of such computer based systems.
Class 40: Services for cooling of computer based systems, namely, servers, networks, infrastructure, hardware and software in a controlled and secure facility to increase the effectiveness, efficiency, longevity or sustainability of such computer based systems.
Class 42: Services for networking of computer based systems, namely, servers, networks, infrastructure, hardware and software in a controlled and secure facility to increase the effectiveness, efficiency, longevity or sustainability of such computer based systems.
Class 45: Services for securing of computer based systems, namely, servers, networks, infrastructure, hardware and software in a controlled and secure facility to increase the effectiveness, efficiency, longevity or sustainability of such computer based systems.
Contested services in Classes 39, 40, 42 and 45
All the contested services are services provided typically by a colocation centre which is a type of a data centre offering space, IT equipment, power, cooling, physical security and networking services for rental to customers. The contested services consist of powering (Class 39), cooling (Class 40), networking (Class 42) and securing (Class 45) of computer based systems (for example in a colocation centre). The applicant’s list of services contains also a number of services that are (or include) typical services provided by a colocation centre, for example leasing of real estate (Class 36), data communications services, rental of telecommunication equipment (Class 38), storage of electronically-stored data or documents (Class 39) or rental of a database server (to third parties) (Class 42).
In the light of the above, all the contested services in Classes 39, 40, 42 and 45 are considered similar to the applicant’s storage of electronically-stored data or documents in Class 39 because they coincide in provider (companies running data centres), relevant public (firms seeking to outsource data storage and related IT activities) and can be complementary (e.g. storage of data on a third party server vs powering, cooling, networking and securing of that server). Furthermore, the general purpose of the services coincides and the nature of the services is similar because it consists in providing facilities adapted for data storage.
- 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 services found to be similar are specialised services directed at business customers with specific professional knowledge or expertise. The degree of attention will be high because the services are very important for the proper functioning of a company, can be purchased on a long-term basis and can be expensive.
- The signs
Earlier trade mark
Contested trade mark
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, bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
Both marks are word marks. The fact that the element ‘COLO’ is depicted in title case in the earlier trade mark and in upper case in the contested sign has no bearing on the comparison of the marks, because both are word marks. Protection is therefore granted for the word itself, and not for the particular way in which the mark is written.
The element ‘Colo’ included in both marks will be associated with ‘colocation’. Bearing in mind that the relevant services are, or potentially can be, services of a colocation centre, this element is weak for all the relevant services.
It is considered that the relevant public will not readily perceive the element ‘CE’ in the earlier trade mark as a descriptive indication for ‘Central Europe’. The applicant did not submit any evidence to prove this claim and neither is ‘CE’ a commonly known abbreviation for ‘Central Europe’. Consequently, the element ‘CE’ is distinctive and the applicant’s argument must be set aside.
Since the marks are word marks, they have no element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the element ‘COLO’. However, they differ in the element ‘CE’ of the earlier trade mark which has no counterpart in the contested sign. Although the identical element ‘COLO’ is weak, it is twice as long as the other element of the earlier trade mark and plays a separate distinctive role in the earlier mark. At the same time, ‘COLO’ is the only element of the contested sign.
Therefore, the signs are visually similar to an average degree.
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 ‛COLO’, present identically in both signs. The pronunciation differs in the sound of the letters ‛CE’ of the earlier sign, which have no counterparts in the contested mark.
Therefore, and bearing in mind what has been mentioned above in the visual comparison of the marks, the signs are aurally similar to an average degree.
Conceptually, the public in the relevant territory will perceive the allusiveness of the element ‘COLO’ in both marks. The element ‘CE’ in the earlier mark has no apparent meaning. Consequently, the signs are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, 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 services 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.
- Global assessment, other arguments and conclusion
The services have been found similar. The earlier trade mark’s degree of distinctiveness is average. The relevant public, which is composed of professionals, will pay a high degree of attention when faced with the marks.
The marks fully coincide in the element ‘COLO’. The entire contested sign is included in the earlier trade mark. Although the element ‘COLO’ is weak, it still has a degree of distinctiveness and plays the role of a separate distinctive element in the earlier trade mark. Although the different element ‘CE’ of the earlier trade mark is placed in the prominent position at the beginning of the mark, the identical element ‘COLO’ is twice as long as the element ‘CE’ and, therefore, occupies a major portion of the earlier trade mark.
Consequently, it is considered that in the circumstances of the present case, the overall impression created by the marks is sufficiently similar to cause confusion for the relevant public in respect of the similar services. The public could think that the contested sign is a modification of the earlier trade mark based on the identical element ‘COLO’.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 12 843 546. It follows that the contested trade mark must be declared invalid for all the contested services.
As the above-mentioned earlier right leads to the success of the application and the cancellation of the contested trade mark for all the services against which the application was directed, there is no need to examine the other earlier right invoked by the applicant (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.
Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.