OPPOSITION No B 2 438 961

Acer Incorporated, 7F-5, No. 369, Fuxing N. Rd., Songshan Dist., Taipei City 105, Taiwan (opponent), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative)

a g a i n s t

Aspire Worldwide Ltd, Riverbank House, 2 Swan Lane, London EC4R 3TT, United Kingdom (applicant), represented by Fieldfisher LLP, Riverbank House, 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative).

On 12/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 438 961 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software; computer software for providing and authorising access to databases; electronic databases; computer databases; computer software for database management; stored information cards; encoded cards; transaction cards; cards containing an integrated circuit chip (smart cards); cards carrying magnetically, optically or electronically recorded or encoded information; charge cards; bank cards; credit cards; debit cards; pre-paid cards; payment cards; card readers; computer software to facilitate payments to retailers and merchants; computer software and hardware for person-to-person payments by electronic means; computer software for storage of payment card and personal information and electronic cash or value in a centralised database; computer encryption software; encryption keys; software for secure data storage and retrieval and transmission of confidential customer information; computer software enabling the interaction of smart cards with card terminals and readers; computer software for transmitting, displaying and storing transaction, identification, and financial information.

Class 35: Compilation of computer databases; database management; updating and maintenance of data in computer databases.

Class 38: Arranging and providing access to a computer database; access to content, websites and portals.

2. Community trade mark application No 13 403 209 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 13 403 209. The opposition is based on, inter alia, German trade mark registration No 302 008 002 230. The opponent invoked Article 8(1)(b) CTMR.

SUBSTANTIATION – INTERNATIONAL TRADE MARK REGISTRATION No 964 581

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) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) CTMIR.

In the present case, in its notice of opposition, the opponent claimed that the opposition was based on, inter alia, international trade mark registration designating the European Union No 964 581. Nevertheless, the WIPO certificate of registration submitted by the opponent to substantiate this earlier mark did not indicate, among the other territories listed therein, that the European Union is a designated territory for this earlier trade mark.

On 16/03/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to submit evidence regarding the earlier trade marks on which the opposition is based. This time limit expired on 16/07/2015.

The opponent did not submit any evidence to substantiate that the European Union is a designated territory of earlier international trade mark registration No 964 581.

According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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.

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 German trade mark registration No 302 008 002 230.

1. The goods and services

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

Class 9: Computer hardware and software; computers; notebooks; laptops; monitors (hardware and programs); computer keyboards; computer mice; computer disk drives; computer disk drives; computer peripherals; uninterruptible power supplies (UPS) for computer units; networking equipment, namely router, switches, hubs, gateways, repeaters and bridges; networking programs; Internet working devices, namely modems and streamers; circuit boards (electronic components) and interface cards for computers.

The contested goods and services are the following:

Class 9: Computer software; computer software for providing and authorising access to databases; electronic databases; computer databases; computer software for database management; stored information cards; encoded cards; transaction cards; cards containing an integrated circuit chip (smart cards); cards carrying magnetically, optically or electronically recorded or encoded information; charge cards; bank cards; credit cards; debit cards; pre-paid cards; payment cards; card readers; computer software to facilitate payments to retailers and merchants; computer software and hardware for person-to-person payments by electronic means; computer software for storage of payment card and personal information and electronic cash or value in a centralised database; computer encryption software; encryption keys; software for secure data storage and retrieval and transmission of confidential customer information; computer software enabling the interaction of smart cards with card terminals and readers; computer software for transmitting, displaying and storing transaction, identification, and financial information.

Class 16: Paper and cardboard; printed publications; books; magazines; catalogues; guides; pamphlets; brochures; instructional and teaching material (other than apparatus).

Class 35: Advertising, marketing and promotional services; provision and maintenance of computerised account records in relation to the sale or exchange of goods and services; arranging of trading transactions and commercial contracts; arranging of buying and selling contracts for third parties; procuring of contracts for the sale and purchase of goods and services; online advertising of goods and services enabling others to sell, request and exchange or barter their goods and services with other registered users; advice relating to barter trade; provision of commercial business information by means of a computer database; business information services provided on-line from a computer database or the internet; sales promotion for others; sales promotion services; business advice, assistance and consultation services relating to franchising; management advisory services relating to franchising; services provided by a franchisor, namely assistance in the running or management of a commercial enterprise; loyalty card services; loyalty scheme services; loyalty, incentive and bonus program services; organisation, operation, management and supervision of loyalty and incentive schemes; compilation of computer databases; database management; updating and maintenance of data in computer databases; commercial information services provided by access to a computer database; business information services provided on-line from a computer database or the Internet; providing an online commercial information directory on the Internet.

Class 36: Financial services; monetary affairs; payment services; conversion of funds; trade exchange services; monetary exchange services; issuing of tokens of value; issuing of tokens of value in relation to customer loyalty schemes; credit services; issuing credit and debit cards; credit and debit card services; provision of prepaid cards; financial, investment and banking services associated with the use and promotion of loyalty and reward programs and credit.

Class 38: Arranging and providing access to a computer database; access to content, websites and portals.

The term ‘namely’, used in the applicant’s list of services and in the opponent’s list of goods 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.

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 goods in Class 9

Computer software is identically contained in both lists of goods.

The contested computer software for providing and authorising access to databases; computer software for database management; computer software to facilitate payments to retailers and merchants; computer software for person-to-person payments by electronic means; computer software for storage of payment card and personal information and electronic cash or value in a centralised database; computer encryption software; software for secure data storage and retrieval and transmission of confidential customer information; computer software enabling the interaction of smart cards with card terminals and readers; computer software for transmitting, displaying and storing transaction, identification, and financial information are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested computer hardware for person-to-person payments by electronic means is included in the broad category of the opponent’s computer hardware. Therefore, they are identical.

The contested electronic databases; computer databases are highly similar to the opponent’s computer software as they may incorporate special software which provides a structure to a digital database and enables their management and the retrieval of data.

The contested card readers; encryption keys are included in the broad category of the opponent’s computer peripherals. Therefore, they are identical.

The contested stored information cards; encoded cards; transaction cards; cards containing an integrated circuit chip (smart cards); cards carrying magnetically, optically or electronically recorded or encoded information; charge cards; bank cards; credit cards; debit cards; pre-paid cards; payment cards are cards that incorporate integrated circuits and may be used for various purposes such as payments, data storage or providing application processing. Therefore, the contested goods overlap with the opponent’s computer hardware, as the latter may consist of physical cards used with computers. Therefore, they are identical.

Contested goods in Class 16

The contested paper and cardboard; printed publications; books; magazines; catalogues; guides; pamphlets; brochures; instructional and teaching material (other than apparatus) have nothing in common with any of the opponent’s goods, as the contested goods are various kinds of printed goods as well as paper, cardboard, and instructional and teaching material, whereas the opponent’s goods are various kinds of information technology goods such as computers. Therefore, these goods have different natures, purposes, distribution channels and manufacturers and they target different consumers. Therefore, they are dissimilar.

Contested services in Class 35

The contested compilation of computer databases; database management; updating and maintenance of data in computer databases are similar to the opponent’s computers in Class 9. These goods and services all belong to the IT sector. They have the same distribution channels, target the same end consumers and are complementary.

The contested advertising, marketing and promotional services; provision and maintenance of computerised account records in relation to the sale or exchange of goods and services; arranging of trading transactions and commercial contracts; arranging of buying and selling contracts for third parties; procuring of contracts for the sale and purchase of goods and services; online advertising of goods and services enabling others to sell, request and exchange or barter their goods and services with other registered users; advice relating to barter trade; provision of commercial business information by means of a computer database; business information services provided on-line from a computer database or the internet; sales promotion for others; sales promotion services; business advice, assistance and consultation services relating to franchising; management advisory services relating to franchising; services provided by a franchisor, namely assistance in the running or management of a commercial enterprise; loyalty card services; loyalty scheme services; loyalty, incentive and bonus program services; organisation, operation, management and supervision of loyalty and incentive schemes; commercial information services provided by access to a computer database; business information services provided on-line from a computer database or the Internet; providing an online commercial information directory on the Internet have nothing in common with the opponent’s goods, as they are different in nature and purpose, and they are not in competition with or complementary to each other. The goods and services have different distribution channels and are normally provided by different undertakings. Therefore, these goods and services are dissimilar. Furthermore, advertising services and the like, such as marketing and promotional services, consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring for it a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their clients’ needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. These services are different from all the opponent’s goods, as broadly speaking the latter belong to different sectors from the contested services, namely the IT and telecommunications sectors. They have different natures and purposes. They are not in competition with or complementary to each other. The goods and services have different distribution channels and are normally provided by different undertakings. Therefore, the contested services and the opponent’s goods are dissimilar.

Contested services in Class 36

The contested financial services; monetary affairs; payment services; conversion of funds; trade exchange services; monetary exchange services; issuing of tokens of value; issuing of tokens of value in relation to customer loyalty schemes; credit services; issuing credit and debit cards; credit and debit card services; provision of prepaid cards; financial, investment and banking services associated with the use and promotion of loyalty and reward programs and credit are essentially services rendered in the area of financial and monetary affairs, offered by institutions such as banks to facilitate various financial transactions and other related activities in the world of finance. Consequently, they are different from all the opponent’s goods, as broadly speaking the latter belongs to different sectors from the contested services, namely the IT and telecommunications sectors. They have different natures and purposes and they are not in competition with or complementary to each other. These goods and services have different distribution channels and are normally provided by different undertakings. Therefore, the contested services and the opponent’s goods are dissimilar.

Contested services in Class 38

Although the contested arranging and providing access to a computer database; access to content, websites and portals and the opponent’s computer hardware and software differ in their natures, they can be used for the same purpose (i.e. to have access to data via computer databases, websites and portals) and can have the same distribution channels and points of sale. They can target the same consumers and can be complementary, and they frequently come from the same companies. Therefore, they are similar.

2. The signs

ASPIRE
Earlier trade mark	Contested sign

The relevant territory is Germany.

Visually, the earlier mark is a word mark, ‘ASPIRE’. The contested sign is a figurative mark consisting of the word ‘aspire’ in lower case bold grey letters with a small figurative element consisting of two wavy lines placed one above the other above the final three letters, ‘IRE’, of the contested sign. The signs coincide in the verbal element ‘ASPIRE’, and to that extent they are visually similar. However, they differ in the graphic depiction of the contested sign and in its figurative element.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ASPIRE’, present identically in both signs, and to that extent the signs are aurally identical. The figurative element in the contested sign is not pronounced.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural 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 earlier mark and the contested sign have no element that could be clearly considered more distinctive than other elements.

The earlier mark has no element that could be considered clearly more dominant (visually eye‑catching) than other elements.

The verbal element ‘aspire’ in the contested sign is the dominant element as it is the most eye-catching.

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 goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 directed at both the public at large and professional customers in business and commerce. Taking into consideration the nature and cost of some of the goods and services, the degree of attention of the relevant public is deemed to vary from average to higher than average.

6. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to various degrees and partly dissimilar.

The signs are visually highly similar, as the only verbal element of the earlier word mark, ‘ASPIRE’, is reproduced in its entirety in the contested sign. Furthermore, the other, figurative, element of the contested sign is not particularly elaborate and visually not dominant. In addition, the signs are aurally identical. Since, from the conceptual perspective, the relevant public will not associate the word ‘ASPIRE’ in both marks with any meaning, there is also nothing to differentiate between the signs from the conceptual point of view.

Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

In view of the above, the Opposition Division considers that the minor differences between the marks are not sufficient to allow the consumers to safely distinguish between the signs.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Considering all the above, due to the overall high degree of similarity of the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public, even when the relevant public displays a heightened degree of attention. Therefore, the opposition is partially well founded on the basis of the opponent’s German trade mark registration.

It follows from the above that the contested trade mark must be rejected for all 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.

Since the opposition is partially 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 as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• Community trade mark registration No 8 216 657 for the word mark ‘ASPIREREVO’ for computer monitor, bag for notebook use only, hard drive, card reader, digital camera, digital recorder, cell phone, PDA, MP3 player, keyboards, printer, mouse, notebook computers, desktop computers, netbook computers, computers, computer shell, namely, computer case, palm computer, server, speaker, CD player, computer programs for accessing computer networks and global communication networks in Class 9

• Community trade mark registration No 9 408 915 for the figurative mark for computers; desktops; notebooks; netbooks; servers; data storage apparatus; memory cards; monitors; DVD rewriters; AC Adaptors use with computers, notebooks and netbooks; battery use with computers, notebooks and netbooks in Class 9.

Since these marks cover similar or narrower scopes of goods, the outcome cannot be different for goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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

Konstantinos MITROU

Karin KUHL

Victoria DAFAUCE MENÉNDEZ

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.