DECISION

of the First Board of Appeal

of 17 June 2016

In Case R 1196/2015-1

Taggar Limited
Broers Building 3rd Floor, 21 JJ Thompson Avenue Cambridge CB3 0FA United Kingdom	Applicant / Appellant

represented by BIRD & BIRD LLP, 15 Fetter Lane, London EC4A 1JP, United Kingdom

v

TAGGED, INC
840 Battery Street, 2nd Floor San Francisco, California 94111 United States of America	Opponent / Respondent

represented by DRAGOTTI & ASSOCIATI S.R.L., Via Nino Bixio 7, IT-20129 Milano, Italy

APPEAL relating to Opposition Proceedings No B 2 328 436 (European Union trade mark application No 12 277 513)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), M. Bra (Rapporteur) and Ph. von Kapff (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 4 November 2013, Taggar Limited (‘the applicant’) sought to register the word mark

TAGGAR

for the following goods and services:

Class 9 – Computer software; downloadable computer software; application software; computer software for modifying the appearance of images; computer software for the collection, editing, organising, modifying, transmission, storage and sharing of data and information; computer software to enable data retrieval; computer software for the uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking and sharing of data and information, all via global computer networks; software for providing access to communications networks;

Class 37 – Maintenance and repair of computer hardware and computer networks;

Class 42 – Design and development of computer software and computer systems; design and development of computer software and computer systems for the collection, editing, organising, modifying, transmission, storage, sharing, uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking and sharing of data and information, all via global computer networks; consultancy, design, testing, research and advisory services, all relating to computer programming, computer security and computer networks; technical support services relating to computer software, computer security, computer networks and the Internet; troubleshooting of computer software, computer hardware and computer network problems; services for enhancing the performance, function and security of computer networks; services relating to the protection of computer software; monitoring of computer network systems; maintenance and repair of computer software; information, consultancy and advisory services relating to all the aforesaid services.

2. The application was published on 19 December 2013.

3. On 19 March 2014, TAGGED, INC (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods and services.

4. The grounds of opposition were those laid down in Article 8(1)(b) and Article 8(5) EUTMR.

5. The opposition was based on the following earlier rights:

• Italian trade mark No 1 521 545

TAGGED

filed on 21 May 2012 and registered on 13 December 2012 for the following goods and services:

Class 9 – Computer software in the nature of applications to enable transmission, access, organization, and management of text messaging, instant messaging, online blog journals, text, web links, and images via the Internet and other communications networks; Computer software development tools; computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; software for accessing information on a global computer network; downloadable software in the nature of a mobile application for mobile phones, laptop computers and tablet computers in the field of social networking; downloadable software to facilitate online advertising, business promotion, connecting social network users with businesses and for tracking users and advertising of others to provide strategy, insight, marketing, and predicting consumer behaviour;

Class 35 – Marketing, advertising and promotion services; market research and information services; promoting the goods and services of others via computer and communication networks; online retail store services featuring online delivery of digital media, namely images movies, musical and audiovisual works and related merchandise; buyer to supplier matching services rendered through an online computerized network; providing information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks; online advertising and marketing services; business data analysis; promotional services; business networking; online service for connecting social network users with businesses; business monitoring and consulting services, namely, tracking users and advertising of others to provide strategy, insight, marketing guidance, and for analyzing, understanding and predicting consumer behaviour and motivations, and market trends; Electronic organization and storage of media objects and other digital content including text, documents, photographs, images, video, and audio;

Class 36 – Financial transaction processing services, namely clearing and reconciling financial transactions via computer and communication networks; electronic processing of bill payment data for users of computer and communication networks; electronic funds transfer services; bill payment services; financial exchange services, namely, providing a virtual currency for use by members of an online community via computer and communication networks; providing information regarding economic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks;

Class 38 – Providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; Electronic mail services, and providing on-line chat rooms for transmission of messages among computer users concerning dating and introduction services; providing online communications links which transfer web site users to other local and global web pages; providing online access to web pages whose content can be modified by the user; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying and electronically transmitting data, information, audio and video images; providing access to computer databases in the fields of social networking, social introduction and dating; providing an online forum for the buying and selling of products and materials and exchanging of sourcing data via a computerized network; electronic transmission of bill payment data for users of computer and communication networks;

Class 41 – Providing computer, electronic and online databases for educational, recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; photo sharing and video sharing services; publication of electronic journals and web logs, featuring user generated or specified content; electronic publishing services for others; entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks; arranging and conducting competitions for video gamers and computer game players; contest and incentive award programs designed to recognize, reward and encourage individuals and groups which engage in online game competition; providing information regarding news, cultural and academic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks. Publishing on-line journals, namely, blogs featuring user defined content; providing on-line electronic publications (not downloadable);

Class 42 – Computer services, namely, hosting electronic facilities for others for organizing and conducting events and interactive discussions via the Internet or other communications networks; hosting virtual communities for registered users to organize groups, events, participate in discussions, aggregate information and resources, and engage in social, business and community networking; hosting of digital content online; hosting computer software applications of others; hosting an interactive website and online non-downloadable software for uploading, downloading, posting, showing, displaying, sharing and transmitting messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; providing a website featuring non-downloadable software in the fields of social networking, marketing and promotion; providing non-downloadable software enabling users to search, locate and communicate with others via electronic communications networks for social networking, social events advertising; providing online computer databases and online searchable databases in the fields of social networking; application service provider services; providing information from searchable indices and databases of information, including text, electronic documents, databases, graphics and audio visual information, by means of global computer information networks or other communications networks; computer services in the nature of customized web pages featuring user-defined information, personal profiles, audio and images; computer services, namely, on-line personalized information services; design and development of computer software for others in the field of social networking, online games and advertising; creating and maintaining websites that provide an on-line community for social networking, online gaming, advertising and marketing; hosting an online website community for registered users to share information, photos, audio and video content and engage in communication and collaboration between and among themselves, to form groups and to engage in social networking; linking to websites of others; providing use of software applications through a personalized web page interface; creating data including images, graphics, sound, text or audio-visual information via the Internet or other communications network for socialization and entertainment purposes; search engine services for entertainment and educational purposes; hosting digital content on the Internet for entertainment and educational purposes;

Class 45 – Providing on-line dating and social introduction services; providing social services and information of a social nature in the field of personal development, namely self-improvement, self-fulfilment and community services; Providing on-line computer database featuring dating information about individuals for dating and introduction purposes, consisting of relationships data about individuals, their contact information, personal characteristics, namely, skills, hobbies, interests, educational information, career information, health information, dating information, results of self assessment tests, and other personal information; computer dating services; Internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials.

• French trade mark No 123 932 121

TAGGED

filed on 5 July 2012 and registered on 1 March 2013 for the following goods and services:

Class 9 – computer software in the form of applications for transmission, access, organization, and management of text messaging, of instant messaging, of on-line blogs’ articles, of text, of web links and images via the Internet and all the other means of communication; tools for software development, computer software used as interface for application programming (IPA) for software facilitating online services for social networking, creating applications for social networks and allowing the recovery, the extraction, the downloading, the posting, the access and the management of data; computer software for downloading, accessing, sending, posting, composing a blog, continue diffusion (streaming), accessing to Internet, sharing or providing information or electronic support via computer and all the other means of communication; software to access information on a global communication network; downloadable software in the form of applications for mobile phones, laptops and tablet computers in the field of social networking software; downloadable software to facilitate online advertising, sales promotion, the relationship between social network users and commercials users, and to track users’ and third-party’s advertising to provide a strategy, a study, of marketing, and predict consumers behaviour;

Class 35 – marketing, advertising and promotion services for others; market research services and market information; promoting of products and services of others via computer and all the other means of communication; on-line retail services including the on-line delivery of digital media, namely, of images, of movies, of music, of audiovisual creations and any other commodity related services; implementation of relationship between buyers and sellers via an online computer network; online advertising and marketing; analysis of business data; promotional services; business networking services; online services for the linking of social network users with companies; monitoring services and business consultancy services, namely tracking users and third-party advertising to provide a strategy, a study, trade policy, and to analyze, understand and predict the behaviour and motivations of users and market trends; electronic processing (management) of media objects (computer files) and other digital content including text, documents, photographs, images, video and audio media;

Class 36 – services of financial transaction processing, namely clearing and reconciling financial transactions via computer and communication networks; services of electronic processing of data of bill of payment for computer’s users and communication networks users; electronic transfer services of funds; billing services; services of financial exchanges, namely, providing virtual currency to be used by members of an online community via computer and communications networks; providing information concerning economic issues from searchable indexes and information databases, including text, electronic documents, databases, graphics and audio visual information, via computer and communication networks (financial information);

Class 38 – providing access to computer databases, electronic or online; telecommunications services, namely electronic transmission of data, of messages and of information; electronic messaging services; providing of online discussion forums for the transmission of messages among computer users concerning dating services and social networking; providing of online communications links for directing users of a websites to other local and global web pages; providing online access to web pages whose content can be edited by users; providing of online discussion forums and providing access to telematic users; providing services of broadcasting of audiovisual contents texts and images via computers or all the other means of communication, namely downloading, sending, viewing and electronic transmission of data, of information, of video images and audiovisual contents; providing access to computer databases in the fields of social networks and meetings; providing of online forums for purchasing and selling of goods and materials and the data about providers data via a computer network; electronic transmission of billing data for computer users and communication networks; providing access to information regarding products from searchable indexes and databases of information, including texts, electronic documents, databases, graphics and audio visual information, via computer and communication networks; providing access to computer databases, electronic database or online database for educational purposes, recreational or leisure purposes in the fields of entertainment, secondary, college and social and community groups of interest; services of sharing photographs and videos, namely providing access to photographs and video; providing access to information from searchable indexes and databases of information, including texts, electronic documents, databases, graphics and audiovisual information via global computer networks or other communications networks; providing access to dating services and online social networking; providing access to an online computer database with information on individuals for meetings and presentations purposes concerning individuals relational data, their contact information, their personal characteristics, namely their skills, leisure, their interests, their school curriculum, their professional careers, their health, their meetings, their results to self- tests and all other personal information; services of providing access to social networking sites allowing users to communicate and share, store, exchange, view, and download of text, of images, of audio, video and all the other multimedia contents;

Class 41 – electronic publication of newspapers and blogs having specified or user-generated contents; electronic publishing services for others; entertainment services, namely facilitating the supply of interactive games, of games with multiple players or a single player for games played via computer or other communication networks; providing information about online computer games and video games via computer or other communications networks; arranging and conducting of competitions for players of video games and IT games; competitions and incentive programs to encourage meetings, reward and encourage individuals and groups who engage in competitive online games; providing information on current, cultural and academic issues from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, via computer and communication networks (information on cultural matters and on education or entertainment); online publication of journals, namely blogs with content specified by users; providing of online electronic publications (not downloadable);

Class 42 – computer services, namely, hosting electronic facilities for others for organizing and conducting events and interactive discussions via the Internet or other means of communication; hosting of virtual communities for registered users for the purpose of organizing groups and events, participating to discussions, collecting information and resources, and engage in business, community and social networks; hosting of digital content online; hosting of computer software applications for third parties; hosting an interactive website and online nondownloadable software for downloading, uploading, posting, showing, displaying, sharing and transmitting of messages, of comments, of multimedia contents, of videos, of movie, of photographs, of audio contents, of animations, of images, of texts, of information and of all the other contents generated by users; providing (design) of a website featuring non-downloadable software in the fields of social networking, marketing and promotion; provision of non-downloadable software enabling users to search, to locate and to communicate with others via electronic communications networks of social networks and the promotion of social events (providing search engines for the Internet); providing of application services (software design); computer services in the form of costumed web pages concerning determinate information of users, of personal profiles, of audio and video contents; design and development of computer software for others in areas of social networks, online games and advertising; hosting an online community of registered users in for sharing information, photographs, video and audio content, their communication and collaboration, the constitution in groups and participating to social network; providing of temporary hosting of software for displaying links to Internet sites of third parties; providing access to software applications via a custom interface Web pages; providing of a search engine for entertainment and education purposes; hosting of digital content on the Internet for entertainment and education purposes; electronic storage (hosting) of media objects and other digital contents including texts, documents, photographs, images, video and audio supports.

• United Kingdom trade mark No 2 626 605

TAGGED

filed on 2 July 2012 and registered on 7 June 2013 for the following goods and services:

Class 9 – Computer software in the nature of applications to enable transmission, access, organization, and management of text messaging, instant messaging, online blog journals, text, web links, and images via the Internet and other communications networks; Computer software development tools; computer software for use as an application programming interface (API) for computer software which facilitates online services for social networking, building social networking applications and for allowing data retrieval, upload, download, access and management; computer software to enable uploading, downloading, accessing, posting, displaying, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks; software for accessing information on a global computer network; downloadable software in the nature of a mobile application for mobile phones, laptop computers and tablet computers in the field of social networking; downloadable software to facilitate online advertising, business promotion, connecting social network users with businesses and for tracking users and advertising of others to provide strategy, insight, marketing, and predicting consumer behaviour;

Class 35 – Marketing, advertising and promotion services; market research and information services; promoting the goods and services of others via computer and communication networks; online retail store services connected with the sale of digital media delivered online; buyer to supplier matching services rendered through an online computerized network; providing business information regarding products from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks for others; online advertising and marketing services; business data analysis; promotional services; business networking; online service for connecting social network users with businesses; business monitoring and consulting services, namely, tracking users and advertising of others to provide strategy, insight, marketing guidance, and for analyzing, understanding and predicting consumer behaviour and motivations, and market trends; Electronic organization and storage of media objects and other digital content including text, documents, photographs, images, video, and audio;

Class 36 – Financial transaction processing services, namely clearing and reconciling financial transactions via computer and communication networks; electronic processing of bill payment data for users of computer and communication networks; electronic funds transfer services; bill payment services; financial exchange services, namely, providing a virtual currency for use by members of an online community via computer and communication networks; providing information regarding economic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks;

Class 38 – Providing access to computer, electronic and online databases; telecommunications services, namely electronic transmission of data, messages and information; Electronic mail services, and providing on-line chat rooms for transmission of messages among computer users concerning dating and introduction services; providing online communications links which transfer web site users to other local and global web pages; providing online access to web pages whose content can be modified by the user; providing online chat rooms and electronic bulletin boards; audio, text and video broadcasting services over computer or other communication networks namely, uploading, posting, displaying and electronically transmitting data, information, audio and video images; providing access to computer databases in the fields of social networking, social introduction and dating; providing an online forum for the buying and selling of products and materials and exchanging of sourcing data via a computerized network; electronic transmission of bill payment data for users of computer and communication networks; provision of online links to websites of third parties;

Class 41 – Providing computer, electronic and online databases for educational, recreational and amusement use in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; photo sharing and video sharing services; publication of electronic journals and web logs, featuring user generated or specified content; electronic publishing services for others; entertainment services, namely facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks; arranging and conducting competitions for video gamers and computer game players; contest and incentive award programs designed to recognize, reward and encourage individuals and groups which engage in online game competition; providing information regarding news, cultural and academic matters from searchable indexes and databases of information, including text, electronic documents, databases, graphics and audio visual information, on computer and communication networks. Publishing on-line journals, namely, blogs featuring userdefined content; providing on-line electronic publications (not downloadable);

Class 42 – Computer services, namely, hosting electronic facilities for others for organizing and conducting events and interactive discussions via the Internet or other communications networks; hosting virtual communities for registered users to organize groups, events, participate in discussions, aggregate information and resources, and engage in social, business and community networking; hosting of digital content online; hosting computer software applications of others; hosting an interactive website and online non-downloadable software for uploading, downloading, posting, showing, displaying, sharing and transmitting messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content; providing a website featuring non-downloadable software in the fields of social networking, marketing and promotion; providing non-downloadable software enabling users to search, locate and communicate with others via electronic communications networks for social networking, social events advertising; providing online computer databases and online searchable databases in the fields of social networking; application service provider services; providing information from searchable indices and databases of information, including text, electronic documents, databases, graphics and audio visual information, by means of global computer information networks or other communications networks; computer services in the nature of customized web pages featuring user-defined information, personal profiles, audio and images; computer services, namely, on-line personalized information services; design and development of computer software for others in the field of social networking, online games and advertising; creating and maintaining websites that provide an on-line community for social networking, online gaming, advertising and marketing; hosting an online website community for registered users to share information, photos, audio and video content and engage in communication and collaboration between and among themselves, to form groups and to engage in social networking; providing use of software applications through a personalized web page interface; creating data including images, graphics, sound, text or audio-visual information via the Internet or other communications network for socialization and entertainment purposes; search engine services for entertainment and educational purposes; hosting digital content on the Internet for entertainment and educational purposes;

Class 45 – Providing on-line dating and social introduction services; providing social services and information of a social nature in the field of personal development, namely self-improvement, self-fulfilment and community services; Providing on-line computer database featuring dating information about individuals for dating and introduction purposes, consisting of relationships data about individuals, their contact information, personal characteristics, namely, skills, hobbies, interests, educational information, career information, health information, dating information, results of self assessment tests, and other personal information; computer dating services; Internet based social networking services allowing users to communicate and share, store, transmit, view, and download text, images, audio and video content, and other multimedia materials.

6. By decision of 23 April 2015 (‘the contested decision’), the Opposition Division upheld the as amended and rejected the contested mark in its entirety. It gave, in particular, the following grounds for its decision:

• The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Italian trade mark No 1 521 545.

Contested goods in Class 9

• The contested ‘computer software; downloadable computer software; application software’ include, as a broader category, the opponent’s ‘downloadable software in the nature of a mobile application for mobile phones, laptop computers and tablet computers in the field of social networking’ and ‘computer software in the nature of applications to enable transmission, access, organization, and management of text messaging, instant messaging, online blog journals, text, web links, and images via the Internet and other communications networks’ in Class 9;

• The contested ‘computer software to enable data retrieval’ include, as a broader category, the opponent’s ‘computer software for use as an application programming interface (API) for computer software which facilitates online services for allowing data retrieval via computer and communication networks’ in Class 9;

• It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods;

• The contested ‘computer software for modifying the appearance of images; computer software for the collection, editing, organising, modifying, transmission, storage and sharing of data and information; computer software for the uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking and sharing of data and information, all via global computer networks and the opponent’s computer software in the nature of applications to enable transmission, access, organization, and management of text messaging, instant messaging, online blog journals, text, web links, and images via the Internet and other communications networks; computer software to enable uploading, downloading, accessing, posting, displaying, blogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communication networks’ in Class 9 belong to broad categories that overlap. Therefore, the goods are identical;

• The contested ‘software for providing access to communications networks’ is, although expressed in a different wording, synonymous to the opponent’s ‘software for accessing information on a global computer network’ in Class 9. The goods are identical.

Contested services in Class 37

• As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification;

• The contested ‘maintenance and repair of computer hardware and computer networks’ are similar to the opponent’s ‘creating and maintaining websites that provide an on-line community for social networking, online gaming, advertising and marketing’ in Class 42. Both services concern maintenance of computer related goods. Therefore, they are likely to be provided by the same companies through the same distribution channels and target the same end users.

Contested services in Class 42

• The contested ‘design and development of computer software and computer systems’ include, as a broader category, the opponent’s ‘design and development of computer software for others in the field of social networking, online games and advertising’ in Class 42. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services;

• The contested ‘design and development of computer software and computer systems for the collection, editing, organising, modifying, transmission, storage, sharing, uploading, downloading, accessing, posting, displaying, tagging, blogging, streaming, linking and sharing of data and information, all via global computer networks and the opponent’s design and development of computer software for others in the field of social networking, online games and advertising’ belong to broad categories that overlap. Consequently, the services are identical;

• The contested ‘design, all relating to computer programming, computer security and computer networks’ and the opponent’s ‘design and development of computer software for others in the field of social networking, online games and advertising’ belong to broad categories that overlap. The services are identical;

• The contested ‘maintenance and repair of computer software’ and the opponent’s ‘creating and maintaining websites that provide an on-line community for social networking, online gaming, advertising and marketing’ may originate from the same companies, have the same distribution channels and target the same end users. Therefore, the services are similar;

• The contested ‘technical support services relating to computer software, computer security, computer networks and the Internet; troubleshooting of computer software, computer hardware and computer network problems; services for enhancing the performance, function and security of computer networks; services relating to the protection of computer software; monitoring of computer network systems’ are all computer related services regarding support, functioning and security. These services are similar to the opponent’s services, such as ‘hosting an interactive website and online non-downloadable software for uploading, downloading, posting, showing, displaying, sharing and transmitting messages, comments, multimedia content, videos, movies, films, photos, audio content, animation, pictures, images, text, information, and other user-generated content’ since it is common that a provider of websites and software also provide support and updates for enhancing the performance as well as monitoring security issues. The services may also coincide in end users and distribution channels;

• The contested ‘consultancy, testing, research and advisory services, all relating to computer programming, computer security and computer networks; information, consultancy and advisory services relating to all the aforesaid services [all of the opponent’s services in this class]’ coincide in usual provider, end users and distribution channels with the opponent’s services, for instance ‘design and development of computer software for others in the field of social networking, online games and advertising’. It is common for a provider of software and networks to also provide research and advisory services. Therefore, the services are considered to be similar;

• Visually, the signs are similar to the extent that they consist of six letters, of which they coincide in the initial letters ‘TAGG’. However, they differ in their last two letters, which are ‘ED’ in the earlier mark and ‘AR’ in the contested sign. Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TAGG’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛ED’ of the earlier mark and ‘AR’ of the contested sign, which have no counterparts in the other sign. Conceptually, while the earlier mark may be understood by part of the public as the English term for ‘added with a character or set of characters in order to identify or categorize it’ (Oxford Dictionaries) because this term also exist in relation to internet in Italian (wordreference.com), the contested sign will not be perceived with any meaning. For this part of the public, since one of the signs has no meaning, the signs are not conceptually similar. For the part of the public for which neither of the signs has a meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. Taking into account the abovementioned visual and aural coincidences, it is considered that the signs under comparison are similar;

• The contested sign has no element that could be clearly considered more distinctive than other elements. The earlier mark will be associated by a part of the relevant public with ‘adding a character or set of characters in order to identify or categorize’. Bearing in mind that the relevant goods and services are related to software, it is considered that this element is weak for the goods and services in Classes 9 and 42. Consequently, the impact of this element is limited for a part of the relevant public when assessing the likelihood of confusion between the marks at issue. The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements;

• 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 a distinctiveness below average for part of the public in the relevant territory. However, for the remaining part that does not grasp any meaning in the earlier mark, the distinctiveness of the earlier mark must be seen as normal;

• In the present case, the goods and services found to be identical or similar are directed both at the public at large and at business customers with specific professional knowledge or expertise. The level of attention may vary from average to above average. The signs have been considered visually and aurally similar. The signs consist of six letters each, of which the first four are identical. Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical beginnings of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks. The difference in the last two letters of the signs cannot counteract the similarities since the differing two letters in the signs will not attract the immediate attention of consumers because of their position at the end of the signs. In addition, consumers tend to remember similarities rather than dissimilarities between signs. Although the earlier sign may be weak for part of the public, it has an average distinctiveness for the remaining part;

• Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public;

• Therefore, the opposition is well founded on the basis of the opponent’s trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods and services;

• As the earlier right examined above leads to the success of the opposition and to the rejection of the contested mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent;

• Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) CTMR.

7. On 23 June 2015, the applicant filed an appeal against the contested decision. The statement of grounds of the appeal was received on 19 August 2015.

8. The opponent submitted its observations in reply on 20 October 2015.

Submissions and arguments of the parties

9. The applicant requests that the Board annul the contested decision, accept the contested mark in its entirety, and order the opponent to bear the costs. Its submissions may be summarised as follows:

• The applicant disagrees with the Opposition Division’s assessment of the similarity between the relevant goods and services. Although it is true that the goods and services in question can be summarized as computer software and services related thereto, the contested decision construed the specifications in an unjustifiably wide manner, and failed to see the differences in the precise nature of the goods and services in question. More precisely, the goods and services of the earlier mark specifically relate to social networking, while those of the application do not. For example, the contested ‘computer software for modifying the appearance of images; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information’ is not identical to ‘computer software in the nature of applications to enable transmission, access, organization and management of text messaging, instant messaging, online blog journals, text web links and images via the Internet and other communications networks; computer software to enable uploading, downloading, accessing, posting, displaying, clogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communications networks’. It is clear that the contested goods referred to relate to a) modifying images and b) managing data, i.e. the manipulation of data itself; while the goods of the earlier mark referred to focus on the transmission of data online; this is a separate function of software; the goods are by their nature different and thus cannot be regarded as identical;

• The applicant denies that the contested mark is similar to the earlier marks. Although the first part of the sign is the same, this does not affect the conclusion that the contested mark and the earlier marks are markedly different. The contested decision failed, in particular, to take into account that the differing final letters lend the entire word a distinct pronunciation and feel in each mark ‒ ‘TAGGED’ being pronounced in a more abrupt manner because of its repeated hard consonants ‘G’ and ‘D’, with the stress likely to be found on the final syllable; while ‘TAGGAR’ is considerably smoother owing to the soft ‘AR’ ending. Furthermore, and significantly, the concept ‘to tag’, and ‘to have been tagged’ is one which is very familiar to the average consumer of the goods and services concerned, for both general consumers and professionals in the IT and software field across Europe, including in the UK, Italy and France. The Italian public as well as the public in Europe generally, as well as professionals in the IT field, are very likely to possess at least a minimal amount of knowledge of English, sufficient to recognize that the earlier mark ‘TAGGED’ is a grammatically correct construction of the simple past form of ‘tag’; while the contested mark ‘TAGGAR’ is an invented word with no meaning. For these reasons, the marks in question are dissimilar;

• The contested decision found that the earlier mark possessed a lower level of distinctiveness for part of the public; namely those who would understand the conceptual meaning of ‘TAGGED’. However, it is submitted that said low level of distinctiveness exists in relation to the entire relevant public; it is unrealistic to suggest that the public at large and professionals in Italy or in any other European country in relation to the relevant goods and services, being computer software and related services, would be unfamiliar with basic internet related terminology such as ‘TAGGED’;

• On the other hand, the contested mark is an invented word and therefore possesses per se a higher level of distinctiveness for the entire relevant public;

• There are significant differences between the marks. The contested mark is an invented word which creates a memorable grammatical tension which results in the contested mark being clearly capable of distinguishing the goods and services of the applicant from those of other undertakings. The earlier mark is a common word used by the relevant public in relation to the goods and services at issue across Europe, including Italy. The two signs are therefore easily distinguishable;

• Consequently, there is no likelihood of confusion in the present case;

• The applicant repeats its submissions before the Opposition Division in relation to Article 8(5) CTMR.

10. The opponent requests that the Board dismiss the appeal and order the applicant to bear the costs, essentially reiterating the reasoning of the contested decision. Its additional arguments may be summarised as follows:

• With regard to the conceptual comparison of the signs, it is likely that the contested mark ‘TAGGAR’ reminds mainly the Italian average consumer of the verb ‘taggare’, a neologism that in Italian has the same meaning as ‘TAGGED’ in English. Taking into consideration the above, the signs may have to be considered conceptually highly similar;

• It is contested that the contested mark ‘TAGGAR’ possesses a higher level of distinctiveness than the earlier mark ‘TAGGED’, considering that it does not have any further distinctive element and is likely to remind the Italian consumer of the Italian word ‘taggare’.

Reasons

11. The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR. It is, therefore, admissible.

12. The Opposition Division upheld the opposition on the basis of the earlier Italian trade mark No 1 521 545. Therefore, the Board will also begin the examination with this earlier mark.

Article 8(1)(b) EUTMR

13. Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

14. For the purposes of applying Article 8(1)(b) EUTMR, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, T‑316/07, easyHotel, EU:T:2009:14, § 42 and the case-law cited therein).

Relevant public

15. The earlier mark is protected in Italy which is, therefore, the relevant territory for analysing the likelihood of confusion.

16. The earlier mark is registered, inter alia, for computer software and services related thereto in Classes 9 and 42. These goods and services are directed at both the professional public as well as the public at large. For the purpose of the global assessment, the average consumer of the category of goods [services] is deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, 16/07/1998, C-210/96, Gut Springenheide, EU:C:1998:369, § 31; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Comparison of the goods and services

17. The Opposition Division held that the contested goods and services in Classes 9, 37, and 42 were either identical with or similar to the opponent’s goods and services. The contested goods in Class 9 were considered identical with the opponent’s goods in the same class. The contested services in Class 37 were considered similar to the opponent’s ‘creating and maintaining websites that provide an online community for social networking, online gaming, advertising and marketing’ in Class 42. The contested ‘design and development of computer software and computer systems; design and development of computer software and computer systems for the collection, editing, organizing, modifying, transmission, storage, sharing, uploading, downloading, accessing, posting, displaying, tagging, blogging, screaming, linking and sharing of data and information, all via global computer networks’ in Class 42 were found identical to the opponent’s services in the same class. The remaining contested services in Class 42 ‘consultancy, design, testing, research and advisory services, all relating to computer programming, computer security and computer networks; technical support services relating to computer software, computer security, computer networks and the Internet; troubleshooting of computer software, computer hardware and computer network problems; services for enhancing the performance, function and security of computer networks; services relating to the protection of computer software; monitoring of computer network systems; maintenance and repair of computer software; information, consultancy and advisory services relating to all the aforesaid services’ were considered similar to the opponent’s services in the same class.

18. The applicant submits that it disagrees with the Opposition Division’s assessment of the similarity between the relevant goods and services. It argues that the contested decision construed the specifications too wide, and failed to acknowledge the differences in the nature of the goods and services in question. It submits that the goods and services of the earlier mark specifically relate to social networking, while those of the application do not. Therefore, the contested ‘computer software for modifying the appearance of images; computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information’ could not be considered identical to ‘computer software in the nature of applications to enable transmission, access, organization and management of text messaging, instant messaging, online blog journals, text web links and images via the Internet and other communications networks; computer software to enable uploading, downloading, accessing, posting, displaying, clogging, streaming, linking, sharing or otherwise providing electronic media or information via computer and communications networks’.

19. The Board notes that the contested ‘computer software for modifying the appearance of images’ is specific image processing software while the ‘computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information’ is computer software with a more general purpose, namely data management. The opponent’s goods in Class 9 mainly relate to social networking. As the contested decision correctly held, however, the goods in comparison in Class 9 overlap. The fact that the opponent’s goods specifically relate to social networking does not mean that they are not also used for data management and image processing. To the contrary, social networking cannot be separated from data management and may include image processing. Moreover, the earlier mark specifically covers software for the purpose of data management, namely ‘computer software in the nature of applications to enable […] organization and management of text messaging, instant messaging, online blog journals, text web links and images via the Internet and other communications networks’. Furthermore, the earlier mark covers the umbrella term ‘downloadable software in the nature of a mobile application for mobile phones, laptop computers and tablet computers in the field of social networking’ which includes software that modifies the appearance of images. The Opposition Division was therefore correct in concluding that these contested services were identical to the opponent’s services in the same class.

20. The applicant’s claim that the opponent’s specification of goods was construed by the Opposition Division in an overly wide manner has to be rejected. Many of the items from the earlier mark’s specification cover broad categories of goods and services while being at the same time sufficiently clear and precise. The applicant did not submit any other arguments which would allow questioning the Opposition Division’s findings concerning the similarity of the goods and services. Therefore, these findings are confirmed for the reasons given in the contested decision.

Comparison of the signs

21. The signs in comparison are the following:

    TAGGED	TAGGAR
    Earlier mark	Contested sign

22. The earlier mark ‘TAGGED’ and the contested mark ‘TAGGAR’ are both six letter word marks.

23. The marks in comparison have the same link and coincide in their first four letters ‘TAGG’, while differing in their last two letters ‘ED’ and ‘AR’. In this regard, it must also be noted that consumers generally pay greater attention to the beginning of a word sign rather than to the end (25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30). On account of the above, there is a visual similarity between the signs in comparison.

24. The relevant Italian public is most likely to pronounce the earlier mark ‘TAGGED’ as [taɡɡed], following the rules of Italian pronunciation and the contested mark ‘TAGGAR’ as [taɡɡar]. Italian consumers are less likely to follow English pronunciation rules and read the earlier mark ‘TAGGED’ as [tæɡt]. Consequently, the pronunciation of the signs’ two final letters ‘ED’ and ‘AR’ represents the only means to phonetically differentiate between the marks in question. For these reasons, there is a considerable phonetic similarity between the marks in comparison.

25. The earlier mark ‘TAGGED’ is the past participle of the English verb ‘to tag’ which means, inter alia, to mark with a tag (http://www.collinsdictionary.com/dictionary/english/tagged). The word ‘TAGGED’ does not have any meaning in Italian, the language of the relevant public. The contested mark ‘TAGGAR’ does not have any meaning in English or Italian. However, it is likely, as the opponent suggests, that due to its proximity to the verb ‘taggare’, currently used in the Italian language e.g. in social media, the term ‘TAGGAR’ would be understood as a neologism which in Italian has the same meaning as ‘TAGGED’ in English. Although ‘TAGGED’ is not an Italian word, taking into account that English is widely used in the context of internet and computer technology and also its closeness to the Italian verb ‘taggare’, it is not unlikely that a significant part of the relevant Italian public may also associate it with the verb ‘taggare’ which is known to them. Therefore, both words are likely to be associated by the relevant Italian consumers in the fields of internet and computer technology with the verb ‘taggare’. Therefore, there is also a conceptual similarity between the marks in comparison.

Likelihood of confusion

26. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16 to 18; and 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

27. The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from those of another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also seventh recital of the EUTMR).

28. The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; and 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

29. Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

30. The contested decision held that the earlier mark ‘TAGGED’ had a low degree of distinctiveness with regard to the English-speaking part of the relevant public in Italy. The earlier mark protects, in particular, computer software and computer-related services in Classes 9 and 42. The English verb ‘to tag’ may be used in this context, for example, where databases are concerned and certain data sets are marked with a tag. However, this link is hardly sufficient to render the earlier mark ‘TAGGED’ weak in relation to the opponent’s goods and services in Classes 9 and 42. Even if part of the relevant Italian public understands the English verb ‘to tag’, it is unclear whether in the context of these goods and services the average Italian consumer would recognize ‘TAGGED’ as the past participle of ‘to tag’. In any event, in relation to the part of the Italian public who does not understand the expression, the earlier Italian mark ‘TAGGED’ possesses an average degree of distinctiveness with regard to the opponent’s relevant goods and services in Classes 9 and 42.

31. In the present case, the opponent’s goods and services in Classes 9 and 42 and the contested goods and services in Classes 9, 37 and 42 are identical or similar. The signs are visually, phonetically and conceptually similar at various degrees.

32. In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

33. For these reasons, there is a likelihood of confusion between the earlier mark ‘TAGGED’ and the contested mark ‘TAGGAR’ on the part of the Italian public in relation to the contested goods and services in Classes 9, 37 and 42. The differences between the signs are insufficient to avoid a likelihood of confusion.

34. Since there is a likelihood of confusion with regard to the earlier Italian trade mark ‘TAGGED’, it is not necessary to examine the other earlier marks. Furthermore, as the opposition is already successful on the basis of Article 8(1)(b) EUTMR, it is not necessary to examine the claimed extended protection under Article 8(5) CTMR.

35. On account of the above, the appeal is dismissed.

Costs

36. Since the applicant is the losing party within the meaning of Article 85(1) EUTMR, it must be ordered to bear the costs of the appeal proceedings. Consequently, the applicant must be ordered to reimburse the opponent with the costs of professional representation in the appeal proceedings at the level laid down in Rule 94(7)(d) CTMIR that is EUR 550. The apportionment of costs in the contested decision remains unchanged.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the opponent’s representation costs in the appeal proceedings fixed at EUR 550.

Signed Th. M. Margellos

Signed M. Bra

Signed Ph. von Kapff

Registrar: Signed H.Dijkema