OPPOSITION No B 2 410 580

E-Plus Mobilfunk GmbH, E-Plus-Str. 1, 40472 Düsseldorf, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft MBB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

Werock B.V., Oostelijke Handelskade 751, 1019 BW Amsterdam, Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, Netherlands (professional representative).

On 16/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 410 580 is partially upheld, namely for the following contested goods and services:

Class 9: Nautical, photographic, cinematographic, optical, signaling, life‑saving and teaching apparatus and instruments; apparatus for the recording, transmission and reproduction of data, sound or images; magnetic data carriers, recording discs; calculating machines, data processing equipment and computers; computer software; computer hardware; teaching apparatus and instruments; media for connecting computer systems with one another; magnetic and machine-readable cards containing encoded information; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail.

Class 35: Business management; business administration; office functions; searching for and retrieving information (for others); compilation and management of online databases and searchable online databases; compilation of information into computer databases; business management and organization consultancy; commercial information agencies; office functions for loyalty schemes based on discounts or incentives; administrative processing of business orders; setting-up and managing databases; compilation of statistics; data file administration; market research; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail.

Class 38: Telecommunications; transferring, distribution, sending and receiving of data, messages, sounds, images and documents; electronic transmission of digital files and other data; services in the field of electronic bulletin boards; providing of online forums, chat rooms, journals and blogs for the transmission of messages, comments, information and multimedia content; broadcasting via a global computer network and other computer and communication networks, namely uploading, downloading, posting, displaying, reproducing, sharing and electronically transmitting messages, comments, multimedia material, text, information; data communications by radio, telecommunications and satellite; telephone and mobile telephone services; providing search engines for obtaining data and information; digital transmission of sound and images (broadcasting), including via radio, television, satellite, cable, free-to-air and by electronic means; news agencies; news agencies; message sending; electronic mail; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail.

Class 42: Scientific and technological services and research and design relating thereto; design, development and maintenance of computers and software; quality testing of goods and services; electronic data storage, for others; data storage and cloud computing services; ICT specialists; IT services; conducting of research, development, design and construction of products, including in relation to telecommunications, communications, computerization (including for offices), storage, transport and processing of data, documents and goods; design, construction, adaptation and updating of computer systems, communications systems and telecommunications systems; maintenance and keeping up-to-date of computer programs, and providing reserve files; testing of communication protocols; development and/or installation of telecommunications, communications and computerization apparatus, including network apparatus; rental of electronic data processing equipment; hosting of internet sites; hosting of e-commerce platforms and databases on the internet; creation, management and maintenance of websites; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail.

2. Community trade mark application No 12 837 209 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 12 837 209. The opposition is based on Community trade mark registration No 4 475 232. The opponent invoked Articles 8(1)(b) and 8(5) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images, in particular subscriber terminals and accessories therefor, namely mains apparatus, mains charging apparatus, accumulators, connecting cables, holding devices and auto-holding devices specially adapted to subscriber terminals, carriers, aerials; data-processing equipment and computers; SIM cards (Subscriber Identification Module).

Class 35: Telephone services, namely secretarial services.

Class 37: Structural and civil engineering, repair work for buildings, installation and assembly of radio and communications devices, repair and maintenance of electrical engineering products.

Class 38: Telecommunications, in particular mobile radiotelephone services, operation of a telecommunications network, operation of a mobile radiotelephone network, message sending, providing an e-commerce platform in online services, transmission of information of all kinds in online services, providing Internet portals, for others; telecommunications, in particular value-added services, namely establishing a call answering system as a function of a central computer, or of a mailbox, transmission of short messages, call relaying, conferencing.

Class 39: Telephone services, namely travel agency services, included in Class 39.

Class 42: Weather reports; architectural and construction drafting, computer programming, in particular for telecommunications; rental of data processing installations, in particular telecommunications apparatus.

Class 43: Telephone services, namely hotel reservations.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for the recording, transmission and reproduction of data, sound or images; magnetic data carriers, recording discs; calculating machines, data processing equipment and computers; computer software; computer hardware; electronic publications, downloadable; digital data files (downloadable); audiovisual productions; audio recordings featuring music; digital music; teaching apparatus and instruments; media for connecting computer systems with one another; magnetic and machine-readable cards containing encoded information; sunglasses; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail.

Class 35: Advertising; business management; business administration; office functions; dissemination of advertisements; mediation for publicity; promoting the goods and services of others by placing advertisements and promotional articles on an electronic site accessed through computer networks, searching for and retrieving information (for others); compilation and management of online databases and searchable online databases; compilation of information into computer databases; mediation in the establishment of business contacts via the internet (public relations); presentation of companies on the internet and other media; business management and organization consultancy; negotiating and concluding commercial transactions for others; commercial information agencies; office functions for loyalty schemes based on discounts or incentives; administrative processing of business orders; setting-up and managing databases; compilation of statistics; market prospecting, research and analysis; opinion polling; data file administration; organization of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail.

Class 38: Telecommunications; transferring, distribution, sending and receiving of data, messages, sounds, images and documents; electronic transmission of digital files and other data; services in the field of electronic bulletin boards; providing of online forums, chat rooms, journals and blogs for the transmission of messages, comments, information and multimedia content; broadcasting via a global computer network and other computer and communication networks, namely uploading, downloading, posting, displaying, reproducing, sharing and electronically transmitting messages, comments, multimedia material, text, information; data communications by radio, telecommunications and satellite; telephone and mobile telephone services; providing search engines for obtaining data and information; digital transmission of sound and images (broadcasting), including via radio, television, satellite, cable, free-to-air and by electronic means; news agencies; news agencies; message sending; electronic mail; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; arranging and conducting of courses, lectures, training sessions, workshops, symposiums, congresses, seminars and other educational activities; publication, lending and dissemination of software, newsletters, books, newspapers, magazines, guidebooks, TV guides, brochures, posters, business cards and other printed matter; audiovisual (multimedia) production; recording studios; services of editorial offices (non-advertising), in particular the editing of non-advertising texts; presentation of goods and services using audio-visual productions, for educational purposes; organizing radio and television broadcasts/programmes; entertainment; the organization of competitions; organization of exhibitions and trade fairs for cultural, sports or educational purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design, development and maintenance of computers and software; quality testing of goods and services; electronic data storage, for others; data storage and cloud computing services; ICT specialists; IT services; conducting of research, development, design and construction of products, including in relation to telecommunications, communications, computerization (including for offices), storage, transport and processing of data, documents and goods; design, construction, adaptation and updating of computer systems, communications systems and telecommunications systems; maintenance and keeping up-to-date of computer programs, and providing reserve files; testing of communication protocols; development and/or installation of telecommunications, communications and computerization apparatus, including network apparatus; rental of electronic data processing equipment; hosting of internet sites; hosting of e-commerce platforms and databases on the internet; creation, management and maintenance of websites; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the applicant’s and the opponent’s lists of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

However, the term ‘namely’, used in the applicant’s and the opponent’s lists of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other (the Canon criteria).

Contested goods in Class 9

The contested apparatus for the recording, transmission and reproduction of sound or images; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are considered identical.

The contested data processing equipment and computers; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s data‑processing equipment and computers. Therefore, they are considered identical.

The contested magnetic and machine-readable cards containing encoded information; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail include, as a broader category, the opponent’s SIM cards (Subscriber Identification Module). 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 magnetic data carriers, recording discs; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s carriers. Therefore, they are considered identical.

The contested calculating machines; computer hardware; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s computers. Therefore, they are considered identical.

Teaching apparatus and instruments include audiovisual teaching apparatus and instruments. Therefore, the contested teaching apparatus and instruments; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images, since they could include audiovisual apparatus. Therefore, they are considered identical.

The contested apparatus for the recording, transmission and reproduction of data; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail overlap with the opponent’s data processing equipment and computers. Therefore, they are considered identical.

The contested photographic, cinematographic, optical apparatus and instruments; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images, since these are appliances used to communicate audio or video information over a distance via radio waves, optical signs, etc., or along a transmission line. Nowadays, multi-media electronic devices combine several functionalities such as video cameras. Therefore, these goods are considered identical.

The contested nautical apparatus and instruments; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail are identical to the opponent’s apparatus for transmission of sound. These two categories overlap in nautical apparatus/instruments for sound transmission (e.g. sonar sounders, sound transmission over the ocean).

The contested signalling apparatus and instruments; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail are identical to the opponent’s apparatus for reproduction of sound. For example, apparatus for reproduction of sound includes acoustic alarms (sirens).

The opponent’s telecommunication services are essentially communication services either by telephone or via a computer. Therefore, the contested media for connecting computer systems with one another; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail refer to essential goods that allow and facilitate telecommunication to varying degrees, and as such they are complementary to the opponent’s telecommunications in Class 38. Furthermore, it is not unusual for telecommunication companies to provide these kinds of goods to consumers. Therefore, these goods and services are similar.

The contested life‑saving apparatus and instruments; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail are similar to the opponent’s apparatus for reproduction of sound. These goods may have the same purpose of ensuring safety. They can be sold through the same channels and have the same producers.

A computer is actually a system, a combination of components that work together. Hardware devices are the physical components of that system. The hardware is designed to work hand in hand with computer programs, which are referred to as software. Computer hardware companies also manufacture software, and these goods have the same distribution channels. Moreover, they are complementary. Therefore, the contested computer software; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail is considered similar to the opponent’s computers.

The contested scientific, surveying, weighing, measuring, checking (supervision) apparatus and instruments; sunglasses; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail are dissimilar to all of the opponent’s goods and services. They do not fulfil any of the Canon criteria and, therefore, there is nothing to indicate any degree of similarity between the contested goods and the opponent’s goods and/or services.

The contested electronic publications, downloadable; digital data files (downloadable); audiovisual productions; audio recordings featuring music; digital music; the aforesaid goods not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid goods not relating to loyalty schemes in the field of retail are all final products with data, sound or image content, that is, they have already been recorded. They do not have anything in common with the opponent’s goods in Class 9 or the opponent’s services in Classes 35, 39 and 43 (telephone services), Class 37 (engineering services), Class 38 (telecommunications services) and Class 42 (weather reports, architectural and construction drafting, computer programming; rental of data processing installations). The fact that apparatus for reproduction of sound or images, computers or associated services are needed in order to make the publication/file available is not a relevant point in common, as the goods do not have the same producers, and their purposes and methods of use are different. They also differ in their end users and distribution channels. Finally, they are neither in competition with each other nor complementary to each other. They are dissimilar.

Contested services in Class 35

Office functions cover services which are aimed at performing day‑to‑day operations that are required by a business to achieve its commercial purpose. 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, as well as support services, such as the rental of office machines and equipment. Therefore, the contested office functions; all the aforesaid services whether or not provided via electronic channels, including the Internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail overlap with the opponent’s telephone services, namely secretarial services. Therefore, they are considered identical.

The contested compilation and management of online databases and searchable online databases; compilation of information into computer databases; setting-up and managing databases; compilation of statistics; data file administration; all the aforesaid services whether or not provided via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail overlap with the opponent’s telephone services, namely secretarial services. Therefore, they are considered identical.

The contested office functions for loyalty schemes based on discounts or incentives; administrative processing of business orders; all the aforesaid services whether or not provided via electronic channels, including the Internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail involve very specific tasks that can be performed by personnel in charge of secretarial services, so they overlap with the opponent’s telephone services, namely secretarial services. Therefore, they are considered identical.

The contested business administration; all the aforesaid services whether or not provided via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are similar to the opponent’s telephone services, namely secretarial services, as they can have the same purpose, providers and end users.

The contested information and consultancy relating to the aforesaid services [business administration; office functions; compilation and management of online databases and searchable online databases; compilation of information into computer databases; office functions for loyalty schemes based on discounts or incentives; administrative processing of business orders; setting-up and managing databases; compilation of statistics; data file administration]; all the aforesaid services whether or not provided via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are part of the applicant’s services found to be similar above and, therefore, the same reasoning as explained above applies with regard to these services.

The contested business management; searching for and retrieving information (for others); business management and organization consultancy; commercial information agencies; market research; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are similar to a low degree to the opponent’s telephone services, namely secretarial services, as they can have the same providers and end users.

The contested advertising; dissemination of advertisements; mediation for publicity; promoting the goods and services of others by placing advertisements and promotional articles on an electronic site accessed through computer networks; mediation in the establishment of business contacts via the internet (public relations); presentation of companies on the internet and other media; negotiating and concluding commercial transactions for others; market prospecting and analysis; opinion polling; organization of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are dissimilar to all of the opponent’s goods and services. There are no coinciding Canon criteria that could possibly indicate a degree of similarity between the contested services and the opponent’s goods and/or services. The contested services are of a different nature from the opponent’s goods and services. They do not have the same purpose, providers or end users. Furthermore, they are neither complementary nor in competition.

Contested services in Class 38

Telecommunications are identically contained in both lists of goods and services.

The contested transferring, distribution, sending and receiving of data, messages, sounds, images and documents; electronic transmission of digital files and other data; services in the field of electronic bulletin boards; providing of online forums, chat rooms, journals and blogs for the transmission of messages, comments, information and multimedia content; broadcasting via a global computer network and other computer and communication networks, namely uploading, downloading, posting, displaying, reproducing, sharing and electronically transmitting messages, comments, multimedia material, text, information; data communications by radio, telecommunications and satellite; telephone and mobile telephone services; providing search engines for obtaining data and information; digital transmission of sound and images (broadcasting), including via radio, television, satellite, cable, free-to-air and by electronic means; news agencies; message sending; electronic mail; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s telecommunications. Therefore, they are considered identical.

Contested services in Class 41

The contested education; providing of training; entertainment; sporting and cultural activities; arranging and conducting of courses, lectures, training sessions, workshops, symposiums, congresses, seminars and other educational activities; publication, lending and dissemination of software, newsletters, books, newspapers, magazines, guidebooks, TV guides, brochures, posters, business cards and other printed matter; audiovisual (multimedia) production; recording studios; services of editorial offices (non-advertising), in particular the editing of non-advertising texts; presentation of goods and services using audio-visual productions, for educational purposes; organizing radio and television broadcasts/programmes; entertainment; the organization of competitions; organization of exhibitions and trade fairs for cultural, sports or educational purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are dissimilar to all of the opponent’s goods and services. The contested services in Class 41 are, in general, services rendered by persons or institutions in the development of the mental faculties of persons, as well as services intended to entertain or to engage the attention. There are no coinciding Canon criteria that could possibly indicate a degree of similarity between the contested services and the opponent’s goods and/or services. The contested services are of a different nature from the opponent’s goods and services. They do not have the same purpose, providers or end users. Furthermore, they are neither complementary nor in competition.

Contested services in Class 42

IT services refer to the application of business and technical expertise to enable organisations in the creation, management and optimisation of or access to information and business processes. The contested IT services; the aforesaid services also via electronic channels, including the Internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail overlap with the opponent’s computer programming. 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 rental of electronic data processing equipment; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the Internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s rental of data processing installations, in particular telecommunications apparatus. Therefore, they are considered identical.

Programming is the writing of a computer program, which is a set of coded instructions that enables a machine, especially a computer, to perform desired sequences of operations. The opponent’s computer programming is a broad category encompassing multiple activities, such as research, design, construction and adaptation, related to computers, including hardware and software. Therefore, the contested conducting of research, development, design and construction of products, including in relation to telecommunications, communications, computerisation (including for offices), storage, transport and processing of data, documents and goods; design, construction, adaptation and updating of computer systems, communications systems and telecommunications systems; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail overlap with the opponent’s computer programming, in particular for telecommunications. Therefore, they are considered identical.

The contested design, development and maintenance of software; maintenance and keeping up‑to‑date of computer programs, and providing reserve files; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are included in the broad category of the opponent’s computer programming. Therefore, they are considered identical.

The contested information and consultancy relating to the aforesaid services [IT services]; the aforesaid services also via electronic channels, including the Internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are part of the applicant’s services found to be identical above and, therefore, the same reasoning as explained above applies with regard to these services.

The contested quality testing of goods and services; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail is a broad category that overlaps with the opponent’s computer programming to the extent that, to perform the opponent’s services, the contested services will necessarily also have to be performed by the opponent. It is impossible for the Opposition Division to filter these services from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s and the opponent’s services, they are considered identical.

The opponent’s computer programming refers to services provided by specialists, such as engineers and computer programmers, in the field of computer hardware and software. There is a particularly strong link between these services and the contested scientific and technological services and research and design relating thereto, information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the Internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail, since they have the same nature. Moreover, they are very likely to be provided by the same companies and may target the same end users. The contested services are, therefore, similar to the opponent’s computer programming.

The same reasoning applies to the contested ICT specialists; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the Internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail. ICT specialists design and maintain complex computer systems in a range of industries. These are services related to the opponent’s computer programming. These services have the same nature and purpose, can be provided by the same companies and target the same consumers. Therefore, these services are considered similar.

The contested electronic data storage, for others; data storage and cloud computing services; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the Internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are considered similar to the opponent’s computer programming, as they can have the same providers, distribution channels and relevant public.

The contested design, development and maintenance of computers; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are similar to the opponent’s computer programming, as they can have the same producers, end users and distribution channels.

The contested hosting of internet sites; hosting of e-commerce platforms and databases on the Internet; creation, management and maintenance of websites; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the Internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail require the opponent’s computer programming services in Class 42. There is a functional complementarity between these services, which, by their nature, belong to the field of information technology. These services can have the same providers. Moreover, they target the same public and use the same distribution channels. Therefore, they are similar.

The contested development and/or installation of telecommunications, communications and computerization apparatus, including network apparatus; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are similar to the opponent’s broad category of installation and assembly of radio and communications devices in Class 37. These services have the same purpose. They can have the same providers, end users and distribution channels. Furthermore, they are complementary.

The contested testing of communication protocols; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are telecommunication‑related services; therefore, they are similar to the opponent’s telecommunications in Class 38, since they can have the same providers and end users. Furthermore, they are complementary.

The contested industrial analysis and research services; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet; the aforesaid services not relating to goods from an online store, mail order company, pay television broadcaster or telecoms provider; the aforesaid services not relating to loyalty schemes in the field of retail are dissimilar to the opponent’s goods and services. These services are not closely connected. They are neither in competition nor complementary, and they differ in nature, distribution channels, method of use and intended purpose.

2. The signs

e plus	PLUS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The signs in conflict are both word marks. In the case of word marks, the word as such is protected, not its written form. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T‑254/06, ‘RadioCom’, paragraph 43). Therefore, it is irrelevant whether the word mark is represented in lower or upper case letters.

Visually, the signs are similar to the extent that they coincide in the element ‘PLUS’. However, they differ in the letter ‘e’ preceding the element ‘PLUS’ in the earlier mark, which has no counterpart in the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛PLUS’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letter ‛e’ of the earlier mark, which has no counterpart in the contested sign.

Conceptually, the public in the relevant territory will perceive the element ‘PLUS’ of both signs as ‘indicating or involving addition; involving positive advantage or good’ (information extracted from Collins English Dictionary on 01/12/2015, at www.collinsdictionary.com) and, to this extent, the signs evoke an identical connotation. The letter ‘e’ of the earlier mark will be seen as meaning ‘electronic, indicating the involvement of the internet’ (information also extracted from Collins English Dictionary on 01/12/2015, at www.collinsdictionary.com).

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks have an identical component, the word ‘PLUS’. This term is not particularly distinctive for a trade mark, as it is a term that will convey an indefinite positive message, evoking the idea of ‘something more’. Therefore, this word has a somewhat laudatory connotation and its distinctiveness is deemed to be below average.

With respect to the letter ‘e’ in the earlier mark, the Office does not find it very distinctive either, as it is a generally used as a prefix indicating that an action can be conducted electronically, through the internet or the web. The meaning of this prefix is considered descriptive in relation to some of the opponent’s goods and services, especially those in Classes 9, 38 and 42, which consist either of apparatus for the transmission of sound or images or of activities connected with telecommunications. Therefore, this element is non-distinctive for those goods and services and the public will not pay as much attention to this element as to the other element (‘PLUS’), which, although having an allusive nature for some of the goods and services, is not descriptive.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the Opposition Division considers that although the word ‘PLUS’ has a laudatory nature, it is not descriptive in relation to the goods and services in question. Therefore, it is considered that the earlier mark is endowed with at least a minimum level of distinctiveness, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. 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 identical or similar to various degrees are partly directed at the public at large (including professionals) and partly at business customers with specific professional knowledge or expertise in the IT field. The degree of attention will range from average to high depending on the exact nature, purpose and price of the goods and services.

6. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to various degrees and partly dissimilar. The degree of attention of the relevant public ranges from average to high.

The marks are visually, aurally and conceptually similar because of the element that they have in common, ‘PLUS’, which is the second verbal element of the earlier mark and the sole element of the contested sign. The marks differ in the letter ‘e’, preceding the word ‘PLUS’, in the earlier sign.

The element ‘PLUS’, included in both marks, makes no clear reference to the goods and services at issue, although it is a rather laudatory term.

The Opposition Division deems that the earlier mark has at least a minimum level of distinctiveness, despite the presence of a weak element in the mark (the prefix ‘e’).

A finding of weak distinctive character of an earlier trade mark, however, does not prevent a finding of a likelihood of confusion. The distinctive character of the earlier mark is only one factor involved in the assessment of likelihood of confusion. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods and services concerned (judgment of 13/12/2007, T‑134/06, ‘Pagesjaunes.com’, paragraph 70).

Consumers tend to remember similarities rather than dissimilarities between signs and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik’, paragraph 26).

The contested sign consists only of the word ‘PLUS’ and there is no other verbal or figurative element that could be compared with the earlier mark. Bearing in mind that the earlier mark is also a word mark, where the first element – the single letter ‘e’ – is descriptive for some of the goods and services in question (it simply indicates that they are conducted by electronic means), the remaining second element – the word ‘PLUS’ – will retain the attention of the relevant public, since it is more distinctive and the main element of the mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

REPUTATION – ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) CTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) CTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 01/04/2015, the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit initially expired on 15/06/2015 and it was extended until 15/08/2015.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) CTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DINU

Eamonn KELLY

Adriana Van Rooden

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.