OPPOSITION No B 2 498 585

ELO Digital Office GmbH, Tübinger Str. 43, 70178 Stuttgart, Germany (opponent), represented by Gleiss Lutz, Lautenschlagerstraße 21, 70173 Stuttgart, Germany (professional representative)

a g a i n s t

Ello, PBC, 688 Pine Street, #2A, Burlington Vermont 05401, United States of America (applicant), represented by Jeffrey Parker and Company, The Grange, Hinderclay, Suffolk IP22 1HX, United Kingdom (professional representative).

On 09/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 498 585 is partially upheld, namely for the following contested services:

Class 41: Providing digital databases in the field of entertainment; providing blogs and digital journals containing user generated content; providing content in the field of entertainment, education; publishing of electronic publications, for others; entertainment services, namely, facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks.

Class 42: Digital, online, and computer services, namely, creating and managing online and digital virtual communities for the purposes of networking and collaboration; hosting digital online meeting rooms and community rooms through web-based and mobile devices that provide digital work space for community events, discussions, and organizing; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites; providing non-downloadable software applications that allow for social networking, creation of digital and brick-and-mortar communities and meetings, and allow the sharing and transmission of audio, video, photographic images, text, graphics and data; providing customizable web pages and digital walls containing user-generated content and user-defined and directed content, personal profiles, audio, video, photographic images, text, graphics and data. computer services, namely, providing search engines for obtaining data on a global computer network providing non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer network; computer services, namely, application service provider featuring application programming interface (API) software for providing gift suggestions and to allow users to perform electronic business transactions via a global computer network; and software as a service (SAAS) services featuring software for providing gift suggestions, sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer network.

2. European Union trade mark application No 13 658 323 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 658 323. The opposition is based on European Union trade mark registration No 11 346 211. The opponent invoked Article 8(1)(b) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 9: Computer programs and software; data carriers.

Class 41: Training, especially product training.

Class 42: Design, development, maintenance, installation, updating and customisation of computer software; software consultancy.

The contested services are the following:

Class 41: Providing digital databases in the field of entertainment and in the fields of secondary, collegiate, social and community interest groups; providing blogs and digital journals containing user generated content; providing content in the fields of social networking, entertainment, education, social, scientific and general interest; publishing of electronic publications, for others; entertainment services, namely, facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks; arranging and conducting competitions for digital gamers; creation and administration of promotions and incentive programs to encourage and reward philanthropy, excellence in a fields of study, creativity, charitable and humanitarian acts.

Class 42: Digital, online, and computer services, namely, creating and managing online and digital virtual communities for the purposes of networking and collaboration; hosting digital online meeting rooms and community rooms through web-based and mobile devices that provide digital work space for community events, discussions, and organizing; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites; providing non-downloadable software applications that allow for social networking, creation of digital and brick-and-mortar communities and meetings, and allow the sharing and transmission of audio, video, photographic images, text, graphics and data; providing customizable web pages and digital walls containing user-generated content and user-defined and directed content, personal profiles, audio, video, photographic images, text, graphics and data. computer services, namely, providing search engines for obtaining data on a global computer network providing non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer network; computer services, namely, application service provider featuring application programming interface (API) software for providing gift suggestions and to allow users to perform electronic business transactions via a global computer network; and software as a service (SAAS) services featuring software for providing gift suggestions, sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer network.

Class 45: On-line social networking services.

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 term ‘especially’, used in the opponent’s list of goods and services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (by analogy, on the use of ‘in particular’, which has the same function as ‘including’, see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of 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 services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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.

Contested services in Class 41

The contested publishing of electronic publications, for others and the opponent’s computer programs and software in Class 9 may serve the same general purpose, as it is becoming common to distribute books, magazines and newspapers in the form of electronic publications to consumers through tablet reading devices by means of software applications. The goods and services target the same relevant public and may be produced or provided by the same undertakings. Therefore, they are similar.

The contested entertainment services, namely, facilitating interactive and multiplayer and single player game services for games played via computer or communication networks; providing information about online computer games and video games via computer or communication networks and the opponent’s computer programs and software in Class 9, which being a broad category may include game software, may serve the same general purpose, broadly speaking entertainment via computer games. Furthermore, the market reality is that the providers of computer games now provide services to provide online interactive gaming, information and competitions. The goods and services target the same relevant public and may be produced or provided by the same undertakings. Therefore, they are similar to a low degree.

The contested providing digital databases in the field of entertainment and providing content in the fields of entertainment, education are similar to a low degree to the opponent’s computer programs and software in Class 9, which being a broad category may include game software, as they can coincide in producer and end user. Furthermore they are complementary.

The contested providing blogs and digital journals containing user generated content are similar to a low degree to the opponent’s training, especially product training as they can coincide in distribution channels. Furthermore they are complementary.

However, the contested providing digital databases in the fields of secondary, collegiate, social and community interest groups; providing content in the fields of social networking, social, scientific and general interest; arranging and conducting competitions for digital gamers; creation and administration of promotions and incentive programs to encourage and reward philanthropy, excellence in a fields of study, creativity, charitable and humanitarian acts are dissimilar to all the opponent’s goods and services in Classes 9, 41 and 42. These goods and services (such as the opponent’s software, training services and design and development services and the applicants entertainment databases, content provision, creation of incentive programs, etc.) have different natures, different purposes and different methods of use. They are not complementary to or in competition with each other. Furthermore, they are usually provided by different undertakings and offered/provided through different distribution channels. The mere fact that the majority of the contested services will require software is by itself insufficient to find them similar given the differences already explained.

Contested services in Class 42

The contested application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media or information over communication networks; providing non-downloadable software applications that allow for social networking, creation of digital and brick-and-mortar communities and meetings, and allow the sharing and transmission of audio, video, photographic images, text, graphics and data; computer services, namely, application service provider featuring application programming interface (API) software for providing gift suggestions and to allow users to perform electronic business transactions via a global computer network; and software as a service (SAAS) services featuring software for providing gift suggestions, sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer network are identical to the opponent’s design, development, maintenance, updating and customisation of computer software, because the opponent’s services include, are included in or overlap with the contested services.

The contested digital, online, and computer services, namely, creating and managing online and digital virtual communities for the purposes of networking and collaboration; hosting digital online meeting rooms and community rooms through web-based and mobile devices that provide digital work space for community events, discussions, and organizing; application service provider (ASP) services, namely, hosting computer software applications of others; providing a web site featuring technology that enables online users to create personal profiles featuring social networking information and to transfer and share such information among multiple websites; providing customizable web pages and digital walls containing user-generated content and user-defined and directed content, personal profiles, audio, video, photographic images, text, graphics and data; computer services, namely, providing search engines for obtaining data on a global computer network providing non-downloadable e-commerce software to allow users to perform electronic business transactions via a global computer network are all services related to the creation, maintenance and management of software services such as digital meeting rooms, web sites etc. These services are similar to the opponent’s design, development, maintenance, installation, updating and customisation of computer software, because they have a similar nature, may be provided by the same providers and can be distributed via the same channels.

Contested services in Class 45

The contested on-line social networking services allow users to share ideas, pictures, posts, activities, events and interests with people in their network. Therefore, these services have a different purpose, method of use and usual common origin from the opponent’s goods and services in Classes 9, 41 and 42. The mere fact that the on line services can be offered using software is not enough to render them similar as the market reality is that the relevant user is consuming a social networking experience rather than software or design and development of software, which instead are targeting the operator of the such online services. Therefore, these contested services are dissimilar to the opponent’s goods and services.

2. 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 are directed in part at the public at large, for example the services in Class 41 directed at players of computer games, and in part at professionals, for example the services in Class 42 of application service provider software. The professional public tends to be more sophisticated and knowledgeable in connection with purchases in a given field and the relevant services in Class 42 can be expensive and infrequently purchased. The degree of attention will vary from average to higher than average.

3. The signs

ELO	ELLO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public.

The earlier mark is a word mark, ‘ELO’.

The contested sign is a word mark, ‘ELLO’.

Neither sign is a meaningful word for the relevant German public. The signs have no element that could be considered more distinctive than other elements. The signs have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs are both unitary word marks of similar length and furthermore they coincide in the letters ‘EL*O’ and differ in the additional ‘L’ present in the contested sign.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘E’, ‘L’ and ‘O’ present identically in both signs. The pronunciation differs in the sound of the additional ‘L’ present in the contested sign, although the double ‘L’ sound will not have a significant impact.

The applicant argued that for a part of the public the double ‘LL’ sound of the contested sign will be pronounced more as an English ‘J’ or ‘Y’. Whilst this is true for some languages, it is not the case for the German speakers. Therefore, this argument must be set aside. The applicant also argued that the earlier mark will be pronounced as an abbreviation (by sounding out the letters E-L-O). However, the Opposition Division is of the opinion that this is not very likely as it is more practical in the present case to pronounce it as a word.

Therefore, the signs are highly similar.

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.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no 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. Global assessment, other arguments and conclusion

The contested services have been found to be partly identical, partly similar to various degrees and partly dissimilar. Some target the public at large and some a professional public. The level of attention will vary from average to higher than average.

The signs are both unitary word marks of a similar length and they have the letters ‘EL*O’ in common. In the earlier mark, these three letters constitute the entirety of the only word element, whereas these letters are three out of four letters in the contested sign. The differences caused by the additional letter ‘L’ in the contested sign will be of minimal significance considering the similarity between the signs, in part because it is a repetition of an already present letter but also because it does not alter greatly the pronunciation of the sign nor does it create a known German word and thereby introduce a conceptual difference between the signs.

The signs, therefore, have been found visually and aurally similar to a high degree, and the conceptual aspect does not influence the assessment of the similarity of the signs.

The applicant argued that the parties operate in completely different arenas. The Opposition Division observes that this claim is irrelevant for the present proceedings, and especially for the comparison of goods and services (which were found partly identical, partly similar and partly dissimilar). This is because the comparison of the goods and services shall be made on the basis of the lists of goods and services as registered and as applied for and not on the basis of the actual or intended use of the goods and services.

Since the double ‘L’ in the contested sign, which is the only difference between the signs, does not constitute a noticeable difference between the marks, there is a likelihood of confusion. This is because the differences between the marks at issue are not sufficient to counteract the similarity deriving from the elements that the marks have in common (judgment of 23/10/2002, T-388/00, ‘ELS’, by analogy).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking public in the relevant territory and, therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark. Furthermore, bearing in mind the high degree of similarity between the signs, this is also the case for those services found similar only to a low degree. 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.

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

COSTS

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

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

The Opposition Division

Sandra KASPERIŪNAITĖ

Ric WASLEY

Solveiga BIEZA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.