Decision on Opposition No B 2 811 845 page: 5 of 10
contested retail services of computer software are similar to a low degree to the
opponent’s computer programs, recorded.
The contested business analysis, research and information services; consultancy on
market research and market studies are provided by consultants or specialised
companies, which analyse their clients’ markets and provide all the necessary
information and advice to help them develop a business or marketing strategy to
achieve the business goals of their clients or to maximise the sales or market
presence of their products and services. Therefore, they are dissimilar to all the
opponent’s goods in Classes 7 and 9, which are essentially industrial robots,
mechanical devices, instruments and apparatus, computers and software. They are
also dissimilar to all the opponent’s services in Class 42, which are largely technical
services relating to robotic goods as well as other, highly specialised, scientific
services. The aforementioned contested services are business-related services that
are provided in entirely different areas to those of the opponent’s goods and services.
Even though both the contested services and the opponent’s services relate to
analysis and research, they have clearly different purposes and methods of use.
Furthermore, the contested services and the opponent’s goods and services are
provided by completely different undertakings and offered/provided through different
distribution channels. They are not complementary to or in competition with each
other and the relevant publics are completely different. The opponent’s arguments in
this regard are therefore not well founded.
The same conclusion holds true for the contested compilation of information into
computer databases; systemisation of information into computer databases, which,
despite the possible use of computers, databases and/or software in accomplishing
such activities, are administrative and clerical tasks falling within the broader
category of office functions. They are neither part of nor related to design and
development of computer software. Therefore they are dissimilar to all the opponent’s
goods and services and the opponent’s arguments in this regard must be set aside.
Contested services in Class 42
The contested computer programming and computer software design; development
of solutions for computer applications software; website design; creating and
maintaining websites for smartphones and tablets; development and testing of
computing methods, algorithms and software; research relating to computer
programming; research relating to data processing; research, development, design
and upgrading of computer software; software engineering services for data
processing programs; development and creation of computer programs for data
processing; computer software programs for electronic language translation
dictionaries and databases; design and development of electronic language
translation dictionaries and databases; computer software development for others;
programming of operating software for accessing and using a cloud computing
network; mobility software services, namely development of software for mobile
applications including custom, packaged or hosted client, client/server, and cloud-
based solutions, including support for all the aforesaid services are included in the
broad category of, or overlap with, the opponent’s design and development of
computer software. Therefore, they are identical.
The contested quality checking and testing; technical project planning; testing of
telecommunication signals; services for the development of methods of testing are
included in the broad category of, or overlap with, the opponent’s scientific and
technological services. Therefore, they are identical.