OPPOSITION No B 2 361 676

Twitter, Inc., 1355 Market Street, Suite 900, 94103 San Francisco, United States of America (opponent), represented by Lane IP Limited, The Forum, St Paul’s, 33 Gutter Lane, EC2V 8AS London, United Kingdom (professional representative)

a g a i n s t

Harpal Bhusate, 11 Draytons View, RG19 8SA Newbury, United Kingdom (applicant), represented by Sondi Jass, 11 Draytons View, RG19 8SA Newbury, United Kingdom

(employee representative).

On 11/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 361 676 is upheld for all the contested services.

2. European Union trade mark application No 12 324 323 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 12 324 323 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 11 601 606 for the word mark ‘VINE’ in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. The opposition is also based on one earlier sign used in the course of trade, in relation to which the opponent invoked Article 8(4) 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 601 606 for the word mark ‘VINE’, since this one is the more similar one to the contested sign than the other earlier mark invoked under the provision in question.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Downloadable software in the nature of a mobile application for creating, sharing, disseminating and posting photos, videos, personal and general information for the purposes of social, personal and professional networking; downloadable software in the nature of a mobile application for social and personal networking; downloadable software in the nature of a mobile application for displaying and sharing a user's location and personal preferences and finding, locating, and interacting with other users and places; application programming interface (API) software for allowing data retrieval, upload, access and management; API software for use in building software applications; software for geo-location based advertising and product and service promotions; computer software; downloadable software in the nature of a mobile application; downloadable software to enable uploading, creating, posting, showing, displaying, blogging, sharing and otherwise providing electronic media or information over the internet and other communications networks.

Class 35: Advertising and marketing; advertising services; 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.

Class 38: Telecommunications; providing an online community forum for users to share information, photos, audio and video content, to form virtual communities, and to engage in social networking; providing a platform for mobile device communications.

Class 42: Providing an interactive website; providing a website featuring non-downloadable software; providing temporary use of online non-downloadable software; providing a platform that gives users the ability to upload, exchange and share photos and videos; providing a platform featuring temporary use of non-downloadable software allowing users to upload, post, display, and share videos and digital content; creating an online community for users to engage in social networking; application service provider featuring application programming interface (API) software.

Class 45: Online social networking services; providing a website on the internet for the purpose of social networking.

The contested services are the following:

Class 35: Professional business consultancy services.

Class 41: Training in the development of software systems.

Class 42: Design and development of computer hardware and software; IT consultancy, advisory and information services; development of computer software application solutions; development of software solutions for internet providers and internet users; design, development and implementation of software.

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 professional business consultancy services are included in the broad category of the opponent’s business consulting services. Therefore, they are identical.

Contested services in Class 41

When comparing the contested training in the development of software systems with, for example, the opponent’s application service provider featuring application programming interface (API) software in Class 42, these are similar to a low degree. The contested training is in a specialised field of the development of software systems and the aforementioned services are also in the field of software development. It is not unusual that the providers of the opponent’s services also provide the contested training services by the same, rather specialised, provider. They may have the same distribution channels, share the same public and may be provided by the same kinds of companies.

Contested services in Class 42

The contested design and development of computer software; IT consultancy, advisory and information services; development of computer software application solutions; development of software solutions for internet providers and internet users; design, development and implementation of software include, as broader categories, the opponent’s application service provider featuring application programming interface (API) software. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested design and development of computer hardware is similar to the opponent’s application service provider featuring application programming interface (API) software in Class 42. These services are complementary, have the same distribution channels, target the same relevant public and they are provided by the same kinds or economically-linked undertakings.

1. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar (to varying degrees) are directed at business customers with specific professional knowledge or expertise in, for example, the fields of business, training and IT.

The degree of attention is considered to vary from average to above average depending on the price, frequency of purchase, (specialised) nature and conditions of the provided services.

3. The signs

VINE
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.

Most of the verbal elements of both marks are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is the word mark ‘VINE’.

The contested sign is a figurative mark consisting of the elements ‘Kinseed Vines’, written in a fairly standard, title case, orange typeface with the word ‘Vines’ written in a bolder typeface than the word ‘Kinseed’ and the slogan ‘Productivity as a Service’, written in a slightly smaller, fairly standard, dark blue, lower-case or title case, typeface. The latter appears underneath the wording ‘Kinseed Vines’.

The elements ‘VINE’ and ‘Vines’ will be perceived as ‘a plant that grows up or over things, especially one which produces grapes’ (information extracted from Collins English Dictionary on 30/03/2020, at https://www.collinsdictionary.com/dictionary/english/vine) or its plural form ‘Vines’. Even though these words have a meaning, they have no particular relation to the relevant services and are distinctive. The word ‘Kinseed’ is a meaningless word and is, therefore, normally distinctive. As regards the contested sign the (slightly) smaller slogan ‘Productivity as a Service’ is a laudatory expression referring to the purpose of these, namely with the goal of increasing productivity and it will merely be seen as a motto or promotional statement. Therefore, it is at most weak and has less impact on the overall impression. The most distinctive words of the contested sign are ‘Kinseed Vines’. The latter is also considered slightly more dominant (visually eye-catching) than the others.

Visually, the signs coincide in the letters ‘VINE’, meaning that the whole earlier mark is included in the contested sign, where it not only forms the sole verbal element in a bolder typeface, but where it also plays an independent distinctive role. The only difference is that in the contested sign these letters appear in a different, albeit fairly standard, typeface and in another colour. They differ in the word ‘Kinseed’, forming one of the most dominant elements of the contested sign (apart from the verbal element ‘Vines’), the last letter ‘s’ of the word ‘Vines’, the expression ‘Productivity as a Service, and the typeface and colours of the contested sign. As the expression ‘Productivity as a Service’ forms an at most weak expression and is less dominant, it will have a limited impact, as explained above.

Therefore, for the above reasons, and taking into account the issues of distinctiveness and dominance, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VINE’, present identically in both marks. The pronunciation differs in the sound of the last letter ‘-s’ of the same word in the contested sign and of the word ‘Kinseed’. The marks also differ in the pronunciation of the expression ‘Productivity as a Service’, if pronounced. However, as this wording is at most weak and is less dominant, it has less impact.

Therefore, for the above reasons, and taking into account the issues of distinctiveness and dominance, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same concept of ‘VINE’, being its plural form in the contested sign, they will be associated with a similar meaning on account of these elements. The word ‘Kinseed’ is a meaningless term. The expression ‘Productivity as a Service’ is at most weak and less dominant and will have a rather limited impact.

Therefore, for all the above reasons, and taking into account the issues of distinctiveness and dominance, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the inherent distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The services at issue have been found identical and similar (to varying degrees) and are directed at a more professional public whose level of attention varies from average to above average. The earlier mark has a normal degree of inherent distinctiveness.

The marks are visually, aurally and conceptually similar to an average degree.

Taking into account all the circumstances, the fact that the earlier mark is fully incorporated, albeit in plural form, in the contested sign where it plays an independent distinctive role, is sufficient for a likelihood of confusion to exist, even for that part of the public that pays a higher degree of attention. It can reasonably be concluded that consumers will not be able to distinguish between the marks in dispute for the services that are identical or similar (to varying degrees) and will perceive them as having the same origin.

In view of all the relevant factors in the present case and also the principle of interdependence between them, that is, the principle that a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those services that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these services.

Furthermore, it is important to point out that it is common for undertakings active on the market to use sub-brands, that is to say signs that derive from a principal mark and that have an element in common, to distinguish the scope of one product or service from that of another. It is, therefore, conceivable that the relevant public, even if it does not directly confuse the signs, may still regard the identical or similar (to varying degrees) services designated by the conflicting signs as different lines that come from the same undertaking or from economically linked undertakings. The relevant public may assume that the contested sign is a sub-brand of the earlier mark or vice versa.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 601 606 for the word mark ‘VINE’. It follows that the contested trade mark must be rejected for all the contested services, even those similar to a low degree.

As the earlier right, European Union trade mark registration No 11 601 606 for the word mark ‘VINE’, leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the opposition is successful on the basis of Article 8(1)(b) EUTMR, there is no need to examine the opposition on the grounds of Article 8(4) and 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Michal KRUK

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.