INTERNET OF I | Decision 2720715 - digi.me Limited v. H.W. Hogenbirk Holding B.V.
Date Published: Oct 1, 2017
OPPOSITION No B 2 720 715
digi.me Limited, 10 Bourne Lane, Wrecclesham, Farnham GU10 4RQ, United Kingdom (opponent), represented by Downing IP Limited, Oak House, Oak End Way, Gerrards Cross, Buckinghamshire SL9 8BR, United Kingdom (professional representative)
a g a i n s t
H.W. Hogenbirk Holding B.V., Looiersgracht 50, 1016 VT Amsterdam, The Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands (professional representative).
On 09/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 720 715 is partially upheld, namely for the following contested services:
Class 41: Providing of training; tuition; courses and training sessions; entertainment.
Class 42: Design and development of computer hardware and software; consultancy, information and awareness-raising regarding the aforesaid services, including provided via electronic networks such as the internet.
2. European Union trade mark application No 15 023 451 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 15 023 451. The opposition is based on European Union trade mark registration No 14 893 275. 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.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Software; archival software; backup software; software for controlling access to stored data.
Class 38: Access to content, websites and portals; providing access to web sites on the internet; provision of access to computer databases; provision of access to data or documents stored electronically; advice and assistance in relation to the provision of and/or the control of access to data or documents stored electronically; electronic exchange of data stored in databases accessible via telecommunication networks; provision of controlled access to data provided by third parties for persons authorised by the third party.
Class 42: Electronic data storage and data back-up services; storage and retention of data for third parties.
The contested services are the following:
Class 35: Advertising; business management; office functions, including in the field of data management; marketing services; market canvassing, research and analysis and opinion polling, including in connection with innovation and design; consulting services in the field of market research and public opinion surveys; creation and management of databases, including databases containing results of market research and opinion polling; compilation of statistics; business consultancy in the field of marketing, creativity and innovation; developing business strategies and concepts for marketing, branding, communication and concept development; business consultancy in relation to the strategy to be followed when marketing new goods; business consultancy and support in the development, design and marketing of products, packaging, and house styles; arranging and conducting advertising, marketing, promotional and publicity campaigns, as well as devising strategies and concepts therefor; consultancy and information regarding the aforesaid services; the aforesaid services also to be provided via electronic networks, including the Internet.
Class 41: Providing of training; tuition; courses and training sessions; entertainment; arranging of congresses, courses, seminars, workshops, lectures and other educational events, including in relation to innovation and design; compiling teaching material, syllabuses and curricula; publication of printed matter, including books, magazines, printed instructional material, printed educational matter and printed course material; publishing, lending and distribution of course material and other publications on CD-ROMs, DVDs and other data carriers; arrangement of displays and exhibitions; consultancy, information and awareness-raising regarding the aforesaid services, including provided via electronic networks such as the Internet.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; services provided by graphic designers, industrial designers, engineers, stylists, designers and illustrators; creation, design of technological goods; design and development of computer hardware and software; product design and product innovation; technical and scientific research in the context of product innovation and production processes; consultancy, information and awareness-raising regarding the aforesaid services, including provided via electronic networks such as the Internet.
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 services in Class 35
The contested services in Class 35 can be summarised as advertising, business management and office functions services.
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, who 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, web sites, videos, the internet, etc.
Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They 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 their market share.
Office functions are the internal day-to-day operations of an organisation including the administration and support services in the ‘back office’. They mainly cover activities that assist in the running of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, inputting information into computer databases, invoicing and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.
The opponent’s services in Class 38 are telecommunication services, which are those that allow people to communicate with one another by remote means. These services consist of providing consumers with technical infrastructure to enable their access to a wide range of information resources and services provided online. Telecommunications is a service usually provided by telecommunication companies, which are responsible for the technical requirements that the communication system must fulfil, such as performance, reliability and availability. Although some of the contested services may be provided on the internet, via electronic media or an online communications network, consumers would not think that the same advertising, business management and office functions companies that carry out promotion, sales and business activities and clerical operations were also responsible for operating a telecommunications network.
Bearing in mind the above, these services have different natures and purposes and will be provided by different providers. The services are not in competition with each other, nor are they complementary in the sense that the relevant public would think that the responsibility for providing these services lay with the same company.
The opponent’s goods in Class 9 are even less similar to the contested services. The purpose of the opponent’s software is to control the functioning of the hardware and direct its operation. By their nature, goods are generally dissimilar to services. There is no complementary connection between the goods and services either. Goods or services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lay with the same undertaking, which is clearly not the case here.
The opponent’s services in Class 42 are specialised information technology services for the storage and backup of information. They are different in nature and purpose from the contested services, are usually provided by different undertakings (e.g. specialised IT companies), have different distribution channels and are not complementary or in competition with each other.
Therefore, contrary to the opponent’s arguments, the contested advertising; business management; office functions, including in the field of data management; marketing services; market canvassing, research and analysis and opinion polling, including in connection with innovation and design; consulting services in the field of market research and public opinion surveys; creation and management of databases, including databases containing results of market research and opinion polling; compilation of statistics; business consultancy in the field of marketing, creativity and innovation; developing business strategies and concepts for marketing, branding, communication and concept development; business consultancy in relation to the strategy to be followed when marketing new goods; business consultancy and support in the development, design and marketing of products, packaging, and house styles; arranging and conducting advertising, marketing, promotional and publicity campaigns, as well as devising strategies and concepts therefor; consultancy and information regarding the aforesaid services; the aforesaid services also to be provided via electronic networks, including the internet are dissimilar to the opponent’s goods and services in Classes 9, 38 and 42.
Contested services in Class 41
The opponent’s software in Class 9 includes, as a broader category, specialised computer software and programmes used for educational purposes. These goods are nowadays common and important, and in an e-learning environment even essential, for the opponent’s providing of training; tuition; courses and training sessions. Therefore, these goods and services are complementary. Indeed, to allow their customers to have direct and immediate access to services and to secure the interactivity necessary for teaching and learning, it has become customary nowadays for providers of educational services to offer these services online and in comprehensive packages that include the goods at issue. Given the prevailing importance of the function and purpose of the software at issue, which is teaching and learning, the consumer does not enquire into the specific manufacturing origin of the software, but rather assumes that it comes from the relevant training service provider. Furthermore, the goods and services in question can have the same method of use (online), end users and distribution channels. Consequently, they are considered similar.
The contested entertainment is similar to a low degree to the opponent’s software in Class 9, since software includes, as a broader category, specialised computer software for games. These goods and services are complementary, target the same relevant public (e.g. young people) and have the same commercial origin (e.g. the same companies that produce the software for video games are strongly interconnected with the entertainment industry).
The rest of the contested services in this class, namely arranging of congresses, courses, seminars, workshops, lectures and other educational events, including in relation to innovation and design; compiling teaching material, syllabuses and curricula; publication of printed matter, including books, magazines, printed instructional material, printed educational matter and printed course material; publishing, lending and distribution of course material and other publications on CD-ROMs, DVDs and other data carriers; arrangement of displays and exhibitions; consultancy, information and awareness-raising regarding the aforesaid services, including provided via electronic networks such as the internet; consultancy, information and awareness-raising regarding the providing of training, tuition, courses, training sessions and entertainment, including provided via electronic networks such as the internet are dissimilar to all the opponent’s goods and services, since they not coincide in any relevant factor. They do not have the same nature, purpose, method of use or usual origin. They are neither in competition nor complementary to each other in the sense that one is indispensable for the use of the other.
Contested services in Class 42
The contested design and development of computer hardware and software refers to the design and development of components that work together in a computer, which include the hardware devices that are the physical components of the system and the computer programs that perform a desired sequence of operations. The opponent’s software in Class 9 is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. Manufacturers of such software products also commonly provide software- and hardware-related services. Moreover, IT companies commonly provide consultations and information, as well as raising awareness regarding their goods and services. Although the nature of the goods and services is not the same, the relevant public, usual producers/providers and distribution channels of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, the contested design and development of computer hardware and software; consultancy, information and awareness-raising regarding the aforesaid services, including provided via electronic networks such as the internet are similar to the opponent’s software.
The rest of the contested services, namely scientific and technological services and research and design relating thereto; industrial analysis and research services; services provided by graphic designers, industrial designers, engineers, stylists, designers and illustrators; creation, design of technological goods; product design and product innovation; technical and scientific research in the context of product innovation and production processes; consultancy, information and awareness-raising regarding the aforesaid services, including provided via electronic networks such as the internet consist essentially of research and scientific/technological services that contribute to the generation, dissemination and application of scientific and technical knowledge. The opponent’s electronic data storage and data back-up services; storage and retention of data for third parties in Class 42 are specialised information technology services for the storage and backup of information. Such services are provided by specialised companies in the IT field; they do not have the same providers as the opponent’s services, they have different distribution channels and they are not complementary or in competition with each other. Therefore they are dissimilar.
The abovementioned contested services are also dissimilar to the opponent’s goods in Class 9 and services in Class 38, since they do not have the same nature, purpose, method of use or usual origin. They are neither in competition nor complementary to each other in the sense that one is indispensable for the use of the other.
- 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 similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. As the degree of specialisation of the goods and services, as well as their cost, may vary significantly (from entertainment in Class 41 to design and development of computer hardware and software in Class 42), it is considered that the degree of attention may also vary from average to high.
- The signs
INTERNET OF ME | INTERNET OF I |
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.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, for which the marks as a whole are meaningful and, therefore, have an impact on the conceptual perception of the signs.
Both the earlier mark, ‘INTERNET OF ME’, and the contested sign, ‘INTERNET OF I’, will be perceived by the relevant public as referring to the world wide web, the way a person sees it and the way that it serves one’s particular needs. The difference in the words ‘ME’ and ‘I’ does not result in different concepts, as both are first person singular pronouns. Although the word ‘INTERNET’ is non-distinctive for the goods and services that can be accessed online, the expressions as a whole are unusual and convey only a vaguely allusive semantic content in relation to them. Therefore, these expressions are both endowed with an average degree of distinctive character. It follows that the signs are conceptually identical.
Visually, the signs coincide in the words ‘INTERNET OF’ and differ in the final words of the marks, ‘ME’ in the earlier mark and ‘I’ in the contested sign. Therefore, the signs are visually similar to a high degree.
Aurally, the pronunciations of the signs coincide in the sounds corresponding to the words ‘INTERNET OF’, present identically in both signs. The pronunciations differ in the last word in each of the signs, ‘ME’ in the earlier mark and ‘I’ in the contested sign. Therefore, the signs are aurally similar to a high 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 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 clear meaning for the goods 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 non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarities between the marks in question, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 8(1)(b) EUTMR, ‘...there exists a likelihood of confusion on the part of the public...’, shows that the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The Average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, since he/she only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).
In the present case, the contested services are partly similar, partly similar to a low degree and partly dissimilar to the opponent’s goods and services and target business customers with specific professional knowledge or expertise, and also the public at large. The degree of attention may vary from average to high.
The signs are conceptually identical and visually and aurally similar to a high degree.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
The Opposition Division considers that, because both signs contain the identical words ‘INTERNET OF’, differing only in their final words, ‘ME’ and ‘I’, which have the same meaning, consumers (even when displaying a higher than average degree of attention) are likely to believe that the similar goods and services at issue originate from the same provider or from economically-linked providers.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 14 893 275. 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 services found to be similar to the goods of the earlier trade mark.
As regards the contested services that are similar to a low degree to the opponent’s goods, it must be borne in mind that 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).
In the present case, the strong similarity between the signs is sufficient to offset the low degree of similarity between some of the goods and services, and a likelihood of confusion exists also in relation to those goods and services.
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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Solveiga BIEZA | Jorge ZARAGOZA GOMEZ | Begoña URIARTE VALIENTE |
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.