OPPOSITION No B 2 538 489

Hopwork, SAS, 123 rue de Rome, 75017 Paris, France (opponent), represented by Partenaires Pi Selarl (Société d'Excercice Libérale à Responsabilité Limitée), 2 rue du Général Delanne, 92200 Neuilly Sur Seine, France (professional representative)

a g a i n s t

Upwork Inc., 441 Logue Avenue Mountain View California 94043, United States of America (applicant), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative).

On 25/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 538 489 is partially upheld, namely for the following contested goods and services:

Class 9: Computer application software for computers and mobile devices, namely, software for use in database management, electronic storage of data and electronic communication; Computer programs for creating searchable databases of information and data; Online tools, namely, downloadable software for collaboration with and multi-party access to documents, emails, videos, data, files and other information; Computer software for use in matching skill sets and capabilities of workers with project requirements; Computer software for monitoring workers, namely, software for tracking, monitoring and recording the activities and activity level of remote and online workers; Computer software that enables communication and sharing of resources among members of an online work team; Computer software for creating a virtual office for collaborative online work by multiple parties; Computer software for connecting workers with each other and with project vendors; Computer software for online project management, and for monitoring, creating and maintaining records of work performed; Computer software, namely, software to identify and define the scope and components of projects; Project management software; Software for tracking of time, tasks, expenses and other project management data and for the creation of work diaries, time sheets, invoices, expense reports and project management reports; Downloadable electronic publications, namely, reports, magazines, e-zines, newsletters, journals, white papers and supplements on topics of professional interest, all in the fields of business, jobs, computer software and hardware, recruiting and employment, and personal and career development; Mobile application software for project management; Scientific, optical, weighing, measuring and teaching apparatus and instruments; data processing equipment, computers; Computer software.

Class 35: Employment recruiting, placement, staffing, and career networking services; Providing an online searchable database featuring job postings, employment opportunities and resumes; Providing on-line employment information; Consulting services in the field of human resources and management of freelance and remote workers; Administration, management, implementation and coordination of human resources; Remote management of human resources, workers and work outsourcing; Providing an online website and computer database featuring information in the field of staffing, monitoring workers, financial compensation and methods for retaining workers and for workers to provide services via the internet; Providing an online portal for submitting and posting of resumes by professionals and posting of job openings and projects by individuals and companies; Providing job placement services and career information services to job applicants and freelance workers; Consulting services in the field of human resources development and advising online workers on how to present their credentials effectively and accurately and deliver high quality services efficiently; Business services, namely, providing an online marketplace for workers and individuals and companies seeking the services of workers and performing analysis to match the background, skills and capabilities of workers with the needs of those seeing the services of such workers; Advertising the goods and services of others via a web site on a global computer network; Providing business consultation and business information, namely, tracking, analyzing and generating reports for others regarding the operation, use and users of an online marketplace; Providing business information, namely, providing an online two-way system for users of an online marketplace to evaluate and provide feedback regarding parties they have interacted with via the online marketplace; Invoicing; Providing employment related services, namely, on-line invoicing and payment, on-line validation of time sheets, on-line budget reporting, on-line access to performance data, an on-line customer feedback system and customized management reports; Providing information in the field of human resources for others, namely, providing time sheets, invoices for payroll reports and human resources forms; Contract management and contracting services, namely, administering and negotiating contracts; Collecting, analyzing and reporting feedback, reviews and information regarding performance of workers and project vendors; Business consultation regarding compliance with regulations; Advertising; Business management; Business administration; Office functions.

Class 36: Providing bill payment and tracking services; Financial information processing; Financial transaction services, namely, providing secure commercial transactions and payment options; Payment processing services in the field of making third party payments; Arranging for and managing the payment of workers or contract services; On-line escrow service for facilitating the payment for services; Insurance; Financial affairs; Monetary affairs.

Class 38: Electronic transmission of software, messages and data via the Internet; Provision of telecommunications connections to the Internet; Telecommunications gateway services; Electronic storage of messages, data and software via the Internet; Providing on-line chat rooms for transmission of messages among computer users; Telecommunications services, namely, providing online chat, online bulletin boards and online message boards featuring topics of general interest in the field of business and the rendering of professional services; Network conferencing services provided on a website on a global computer network to enable buyers and sellers of professional services to negotiate and collaborate on business projects from any location; Mobile telecommunications services; Providing communication capabilities via mobile and handheld devices for transmission of messages; Telecommunications.

Class 41: Computer services, namely, providing online publications, namely, reports, magazines, e-zines, newsletters, journals, white papers and supplements, and summaries thereof, on topics of professional interest, all in the fields of business, jobs, staffing, personal development and career development, computer software and hardware, recruiting and employment, and personal and career development; Educational and informational services, namely, arranging and conducting educational conferences, seminars, tutorials and workshops in the field of rendering and obtaining services on a freelance or outsourced basis; Providing a website featuring a database in the field of business training and employment training; Education; Providing of training; Entertainment; Sporting and cultural activities.

Class 42: Application service provider (ASP), namely, hosting computer software applications of others; Software as a service (SaaS) services featuring software for use in database management, electronic storage of data and electronic communication, for use in matching skill sets and capabilities of workers with project requirements, for creating searchable databases of information and data, and for monitoring workers, namely, software for tracking, monitoring and recording the activities and activity level of remote and online workers; Software as a service (SaaS) services featuring software for project management, for collaboration with and multi-party access to documents, emails, videos, data, files and other information, for online project management, and for monitoring, creating and maintaining records of work performed, and for connecting workers with each other and with project vendors; Software as a service (SaaS) services featuring software that enables communication and sharing of resources among members of an online work team, and for tracking of time, tasks, expenses and other project management data and for the creation of work diaries, time sheets, invoices, expense reports and project management reports; Computer services, namely, providing non-downloadable computer software for others to facilitate and coordinate real time and asynchronous interpersonal communications and collaboration, and for sharing information; Computer services, namely, consultation, design and development of computer software programs for use by others; Support services, namely, software maintenance, help desk services, computer and user directory services in the field of development, deployment, use and distribution of software used to facilitate and coordinate real time and asynchronous interpersonal communications and collaboration, and for sharing information; Computer services, namely, digital content protection; Hosting web sites for others; Providing an online calendar; Providing temporary use of online non-downloadable software used to define the scope of, schedule, track and fulfill professional service projects, and to identity, source, negotiate and collaborate with, evaluate and provide feedback on vendors of professional services projects; Providing temporary use of non-downloadable computer software for the transmission, storage and sharing of data and information; Computer services, namely, providing online non-downloadable software that allows users to store data electronically and communicate electronically; Providing a secure electronic online system featuring technology which allows users to communicate, share information and resources, and engage in business and professional networking via global communication networks; Providing temporary use of non-downloadable software for use in matching skill sets and capabilities of workers with project requirements; Providing a website featuring temporary use of non-downloadable software enabling users to search, locate and communicate with others; Providing temporary use of non-downloadable software for tracking of time, tasks, expenses and other project management data and for the creation of work diaries, time sheets, invoices, expense reports and project management reports; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

2. European Union trade mark application No 13 759 221 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely the following:

Class 9: Nautical, surveying, photographic, cinematographic, signalling, checking (supervision), life-saving and apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, Fire-extinguishing apparatus.

Class 36: Real estate affairs.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 759 221. The opposition is based on French trade mark registration No 3 986 926. 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: Electronic publications.

Class 35: Advertising, business management, business administration, office functions; arranging subscriptions to telecommunication services for others, employment recruiting services, personnel placement, staffing, management of computerised files, services for professional networking, consulting services in the field of human resources, administration, management, implementation and coordination of human resources, remote management of human resources and outsourcing work, online providing of a website and a database containing information on interviewing, staffing, employee monitoring, compensation and methods of conservation workers and trade online services, providing of an online portal for presentation and display of CV by professionals and for display of vacant jobs by individuals and corporations, provision of job search and career guidance for job candidates, online support services for workers on the way of presenting effectively and accurately their titles of skills. Online advice for workers on how to effectively provide quality services, advertising, business management; business administration, office functions. Accounting services and works, management of corporate accounting, advice and information for accounting, billing work. Administrative management of factoring contracts, administrative management of trade receivables, administrative management of accounts receivable; administrative management of guarantees and pre-litigation and litigation files of accounts receivable, organisation of exhibitions for commercial or advertising purposes.

Class 36: Electronic payment services, namely, processing payments for purchase of goods and services via an electronic communications network; services for the electronic funds transfer; online services in the field of payments escrow accounts type. billing and automatic payment services, conducting of financial analysis and reports; bill payment services; financing and funding services.

Class 38: Provision of online forums. Providing access to data bases. Electronic bulletin board services (telecommunication services). Providing telecommunications connections to a global computer network; providing of online electronic scoreboards for sending messages between users of computers on work opportunities. Services in the field of electronic mail services; access to telecommunications; online providing of interactive bulletin board for shipping, promotion, purchase, sale and auction of goods and services via a global computer network.

Class 41: Organization of selection procedures in the field of competition for the collection of information to the public for developing new goods and services and enhancing existing goods and services via Internet or not. Online publication of electronic books and journals. Arranging and conducting of colloquiums, conferences and congresses. Organization of exhibitions for cultural or educational purposes.

Class 42: Design and development of computer hardware and software, providing of a website featuring technology to create and manage an online marketplace for buyers and sellers of services, where buyers can view descriptions of projects and where sellers can display information about their qualifications, experience and skills to carry out the displayed projects; Providing of a website featuring technology to match service providers having appropriate tasks or projects with people capable of performing the tasks or projects to organize from the payment to the realization of these tasks or projects; Scientific and technological services and research and design relating thereto; industrial analysis services and research services; computer systems analysis. Computer systems design; Consultancy in the field of computers. Digitization of documents. Software as a Service (SaaS). Information technology (IT) consulting services.

Class 45: Legal Services, Mediation services in the field of dispute resolution.

The contested goods and services are the following:

Class 9: Computer application software for computers and mobile devices, namely, software for use in database management, electronic storage of data and electronic communication; Computer programs for creating searchable databases of information and data; Online tools, namely, downloadable software for collaboration with and multi-party access to documents, emails, videos, data, files and other information; Computer software for use in matching skill sets and capabilities of workers with project requirements; Computer software for monitoring workers, namely, software for tracking, monitoring and recording the activities and activity level of remote and online workers; Computer software that enables communication and sharing of resources among members of an online work team; Computer software for creating a virtual office for collaborative online work by multiple parties; Computer software for connecting workers with each other and with project vendors; Computer software for online project management, and for monitoring, creating and maintaining records of work performed; Computer software, namely, software to identify and define the scope and components of projects; Project management software; Software for tracking of time, tasks, expenses and other project management data and for the creation of work diaries, time sheets, invoices, expense reports and project management reports; Downloadable electronic publications, namely, reports, magazines, e-zines, newsletters, journals, white papers and supplements on topics of professional interest, all in the fields of business, jobs, computer software and hardware, recruiting and employment, and personal and career development; Mobile application software for project management; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus.

Class 35: Employment recruiting, placement, staffing, and career networking services; Providing an online searchable database featuring job postings, employment opportunities and resumes; Providing on-line employment information; Consulting services in the field of human resources and management of freelance and remote workers; Administration, management, implementation and coordination of human resources; Remote management of human resources, workers and work outsourcing; Providing an online website and computer database featuring information in the field of staffing, monitoring workers, financial compensation and methods for retaining workers and for workers to provide services via the internet; Providing an online portal for submitting and posting of resumes by professionals and posting of job openings and projects by individuals and companies; Providing job placement services and career information services to job applicants and freelance workers; Consulting services in the field of human resources development and advising online workers on how to present their credentials effectively and accurately and deliver high quality services efficiently; Business services, namely, providing an online marketplace for workers and individuals and companies seeking the services of workers and performing analysis to match the background, skills and capabilities of workers with the needs of those seeing the services of such workers; Advertising the goods and services of others via a web site on a global computer network; Providing business consultation and business information, namely, tracking, analyzing and generating reports for others regarding the operation, use and users of an online marketplace; Providing business information, namely, providing an online two-way system for users of an online marketplace to evaluate and provide feedback regarding parties they have interacted with via the online marketplace; Invoicing; Providing employment related services, namely, on-line invoicing and payment, on-line validation of time sheets, on-line budget reporting, on-line access to performance data, an on-line customer feedback system and customized management reports; Providing information in the field of human resources for others, namely, providing time sheets, invoices for payroll reports and human resources forms; Contract management and contracting services, namely, administering and negotiating contracts; Collecting, analyzing and reporting feedback, reviews and information regarding performance of workers and project vendors; Business consultation regarding compliance with regulations; Advertising; Business management; Business administration; Office functions.

Class 36: Providing bill payment and tracking services; Financial information processing; Financial transaction services, namely, providing secure commercial transactions and payment options; Payment processing services in the field of making third party payments; Arranging for and managing the payment of workers or contract services; On-line escrow service for facilitating the payment for services; Insurance; Financial affairs; Monetary affairs; Real estate affairs.

Class 38: Electronic transmission of software, messages and data via the Internet; Provision of telecommunications connections to the Internet; Telecommunications gateway services; Electronic storage of messages, data and software via the Internet; Providing on-line chat rooms for transmission of messages among computer users; Telecommunications services, namely, providing online chat, online bulletin boards and online message boards featuring topics of general interest in the field of business and the rendering of professional services; Network conferencing services provided on a website on a global computer network to enable buyers and sellers of professional services to negotiate and collaborate on business projects from any location; Mobile telecommunications services; Providing communication capabilities via mobile and handheld devices for transmission of messages; Telecommunications.

Class 41: Computer services, namely, providing online publications, namely, reports, magazines, e-zines, newsletters, journals, white papers and supplements, and summaries thereof, on topics of professional interest, all in the fields of business, jobs, staffing, personal development and career development, computer software and hardware, recruiting and employment, and personal and career development; Educational and informational services, namely, arranging and conducting educational conferences, seminars, tutorials and workshops in the field of rendering and obtaining services on a freelance or outsourced basis; Providing a website featuring a database in the field of business training and employment training; Education; Providing of training; Entertainment; Sporting and cultural activities.

Class 42: Application service provider (ASP), namely, hosting computer software applications of others; Software as a service (SaaS) services featuring software for use in database management, electronic storage of data and electronic communication, for use in matching skill sets and capabilities of workers with project requirements, for creating searchable databases of information and data, and for monitoring workers, namely, software for tracking, monitoring and recording the activities and activity level of remote and online workers; Software as a service (SaaS) services featuring software for project management, for collaboration with and multi-party access to documents, emails, videos, data, files and other information, for online project management, and for monitoring, creating and maintaining records of work performed, and for connecting workers with each other and with project vendors; Software as a service (SaaS) services featuring software that enables communication and sharing of resources among members of an online work team, and for tracking of time, tasks, expenses and other project management data and for the creation of work diaries, time sheets, invoices, expense reports and project management reports; Computer services, namely, providing non-downloadable computer software for others to facilitate and coordinate real time and asynchronous interpersonal communications and collaboration, and for sharing information; Computer services, namely, consultation, design and development of computer software programs for use by others; Support services, namely, software maintenance, help desk services, computer and user directory services in the field of development, deployment, use and distribution of software used to facilitate and coordinate real time and asynchronous interpersonal communications and collaboration, and for sharing information; Computer services, namely, digital content protection; Hosting web sites for others; Providing an online calendar; Providing temporary use of online non-downloadable software used to define the scope of, schedule, track and fulfill professional service projects, and to identity, source, negotiate and collaborate with, evaluate and provide feedback on vendors of professional services projects; Providing temporary use of non-downloadable computer software for the transmission, storage and sharing of data and information; Computer services, namely, providing online non-downloadable software that allows users to store data electronically and communicate electronically; Providing a secure electronic online system featuring technology which allows users to communicate, share information and resources, and engage in business and professional networking via global communication networks; Providing temporary use of non-downloadable software for use in matching skill sets and capabilities of workers with project requirements; Providing a website featuring temporary use of non-downloadable software enabling users to search, locate and communicate with others; Providing temporary use of non-downloadable software for tracking of time, tasks, expenses and other project management data and for the creation of work diaries, time sheets, invoices, expense reports and project management reports; Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

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 ‘namely’, used in the both 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.

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

The contested downloadable electronic publications, namely, reports, magazines, e-zines, newsletters, journals, white papers and supplements on topics of professional interest, all in the fields of business, jobs, computer software and hardware, recruiting and employment, and personal and career development are included in the broad category of the opponent’s electronic publications. Thus, these goods are identical.

The contested Computer application software for computers and mobile devices, namely, software for use in database management, electronic storage of data and electronic communication; Computer programs for creating searchable databases of information and data; Online tools, namely, downloadable software for collaboration with and multi-party access to documents, emails, videos, data, files and other information; Computer software for use in matching skill sets and capabilities of workers with project requirements; Computer software for monitoring workers, namely, software for tracking, monitoring and recording the activities and activity level of remote and online workers; Computer software that enables communication and sharing of resources among members of an online work team; Computer software for creating a virtual office for collaborative online work by multiple parties; Computer software for connecting workers with each other and with project vendors; Computer software for online project management, and for monitoring, creating and maintaining records of work performed; Computer software, namely, software to identify and define the scope and components of projects; Project management software; Software for tracking of time, tasks, expenses and other project management data and for the creation of work diaries, time sheets, invoices, expense reports and project management reports; Mobile application software for project management; data processing equipment, computers; Computer software are related to the opponent’s Design and development of computer software in Class 42.

Design and development of computer software include the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations. Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. Data processing equipment and computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs to operate. Therefore, Design and development of computer software are closely linked to the aforementioned contested goods. This is because manufacturers of computers and/or software will also commonly provide computer- and/or software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

The contested Scientific, optical, weighing, measuring and teaching apparatus and instruments share some point of contact with the opponent’s Scientific and technological services and research and design relating thereto in Class 42. It is true that goods and services have a difference nature. However, these goods and services share the same relevant public and can also have the same origin and distribution channels. Thus, they are deemed to be similar to a low degree.

The contested nautical, surveying, photographic, cinematographic, signalling, checking (supervision) and life-saving apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, Fire-extinguishing apparatus are sufficiently removed from the opponent’s goods in Class 9 and services in Classes 35, 36, 38, 41, 42 and 45. These goods and services clearly have different natures, origins, purposes and methods of use. Also, they have different distribution channels and target different end users. Neither are they complementary or in competition. Consequently, they are dissimilar.

Contested services in Class 35

The contested Advertising; Business management; Business administration; Office functions are also covered by the earlier mark. Thus, these services are identical.

The contested Advertising the goods and services of others via a web site on a global computer network are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested Employment recruiting, placement, staffing, and career networking services; Providing an online searchable database featuring job postings, employment opportunities and resumes; Providing on-line employment information; Consulting services in the field of human resources and management of freelance and remote workers; Administration, management, implementation and coordination of human resources; Remote management of human resources, workers and work outsourcing; Providing an online website and computer database featuring information in the field of staffing, monitoring workers, financial compensation and methods for retaining workers and for workers to provide services via the internet; Providing an online portal for submitting and posting of resumes by professionals and posting of job openings and projects by individuals and companies; Providing job placement services and career information services to job applicants and freelance workers; Consulting services in the field of human resources development and advising online workers on how to present their credentials effectively and accurately and deliver high quality services efficiently; Business services, namely, providing an online marketplace for workers and individuals and companies seeking the services of workers and performing analysis to match the background, skills and capabilities of workers with the needs of those seeing the services of such workers; Providing business consultation and business information, namely, tracking, analyzing and generating reports for others regarding the operation, use and users of an online marketplace; Providing business information, namely, providing an online two-way system for users of an online marketplace to evaluate and provide feedback regarding parties they have interacted with via the online marketplace; Invoicing; Providing employment related services, namely, on-line invoicing and payment, on-line validation of time sheets, on-line budget reporting, on-line access to performance data, an on-line customer feedback system and customized management reports; Providing information in the field of human resources for others, namely, providing time sheets, invoices for payroll reports and human resources forms; Contract management and contracting services, namely, administering and negotiating contracts; Collecting, analyzing and reporting feedback, reviews and information regarding performance of workers and project vendors; Business consultation regarding compliance with regulations are identical (because the opponent’s services are included in or overlap with the contested services) or at least highly similar to at least one of theese opponent’s services, namely business management; business administration; office functions in Class 35.

Contested services in Class 36

The contested Providing bill payment and tracking services are equally listed or included in the broad category of the opponent’s bill payment services. Thus, these services are identical.

The contested Payment processing services in the field of making third party payments include, as a broader category, or overlap with, the opponent’s electronic payment services, namely, processing payments for purchase of goods and services via an electronic communications network. Since the Opposition Division cannot dissect ex officio the broad category/ of the contested services, they are considered identical to the opponent’s services.

The contested Financial transaction services, namely, providing secure commercial transactions and payment options are, notwithstanding a slightly different wording, the same as the opponent’s services for the electronic funds transfer in Class 36. Thus, these services are identical.

The contested arranging for and managing the payment of workers or contract services are included or overlap with the opponent’s billing and automatic payment services in Class 36. Thus, these services are identical.

The contested Financial information processing are included in the broad category of the opponent’s conducting of financial analysis and reports in Class 36. It follows that these services are identical.

The contested On-line escrow service for facilitating the payment for services are included in the opponent’s broad category of online services in the field of payments escrow accounts type. Consequently, these services are identical.

The contested Financial affairs include, as a broader category the opponent’s financing and funding services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested Monetary affairs include as a broader category, or overlap with, the opponent’s financing and funding services. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested services of Insurance are related to the opponent’s financing and funding services. The opponent’s services are financial services, which consist of, for instance, the provision of all the services related to facilities usually provided by banks and finance companies, such as saving accounts, leasing, money transfer, etc. The contested services consist of insurance services. Providing insurance services consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages. The information and consultancy services related to insurance refer to providing a user with material (general or specific) about a matter or service. These kinds of services are frequently offered as part of other services in relation to which the information is given, by the same companies. In this case, they are offered as part of insurance services. The contested services of insurance are similar to the opponent’s financing and funding services, since they coincide in nature, can coincide in distribution channels, can target the same consumers and are frequently offered by the same kinds of companies.

The contested Real estate affairs are provided by real estate agencies or by licensed/certified individual assessors, whereas the earlier services, of primary financial nature are provided by financial institutions. The mere fact that real estate may have to be financed in order to be purchased is not enough to find similarity between real estate services and the opponent’s financial and monetary services. Even if financial services can be important for the acquisition of real estate, the consumers usually turn first to a real estate agent to search for a property, and secondly to a financial institution to finance the property. As such they are dissimilar to all the opponent’s services in Class 36, namely Electronic payment services, namely, processing payments for purchase of goods and services via an electronic communications network; services for the electronic funds transfer; online services in the field of payments escrow accounts type. billing and automatic payment services, conducting of financial analysis and reports; bill payment services; financing and funding services which are of primary financial and monetary nature.

These contested services are also dissimilar to the remaining opponent’s goods in Class 9 and services in Classes 35, 38, 41, 42 and 45.

As regards the goods, they are, by definition, of different nature to the contested services. They have different purposes, distribution channels, end users. For the sake of completeness, it is important to note that even though the opponent’s publications could have as subject matter the contested services, i.e. publications for the selling of real estate items, the link is not sufficient to render these goods and services similar. Consumers would not expect publication items being issued by real estate agencies.

As regards the services, while it is true that all are services and thus have, by definition, the same nature, the services in conflict have different purposes, they are addressed to different consumers (end users), they are not in competition nor can they substitute each other.

In view of all the foregoing, it can therefore be concluded that the contested real estate affairs and the opponent’s goods and services are dissimilar.

Contested services in Class 38

The contested Telecommunications include, as a broader category, the opponent’s Providing telecommunications connections to a global computer network. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested services of Provision of telecommunications connections to the Internet are, notwithstanding a slightly different wording, the same as the opponent’s Providing telecommunications connections to a global computer network in Class 38. Thus, these services are identical.

The contested Telecommunications gateway services are included in the opponent’s broad category of access to telecommunications. Thus, these services are identical.

The contested Telecommunications services, namely, providing online chat, online bulletin boards and online message boards featuring topics of general interest in the field of business and the rendering of professional services; Network conferencing services provided on a website on a global computer network to enable buyers and sellers of professional services to negotiate and collaborate on business projects from any location are strictly related to the opponent’s providing of online electronic scoreboards for sending messages between users of computers on work opportunities. These services have the same nature, purpose, origin, relevant public and distribution channels. Thus, they are deemed to be highly similar.

The contested Electronic transmission of software, messages and data via the Internet; Providing on-line chat rooms for transmission of messages among computer users share various points of contact with the opponent’s Services in the field of electronic mail services. These services have the same nature, purpose (i.e. exchange messages), origin, relevant public and distribution channels. Consequently, they are deemed to be highly similar.

The contested Mobile telecommunications services; Providing communication capabilities via mobile and handheld devices for transmission of messages and the opponent’s access to telecommunications have the same nature, purpose (i.e. rived telecommunication means), origin, relevant public and distribution channels. It follows that they are deemed to be highly similar.

The contested Electronic storage of messages, data and software via the Internet are also in connection with the opponent’s Providing access to data bases. In fact, it cannot be excluded that the same companies will render these services to the same users. Additionally, these goods are expected to be distributed thorough the same channels. Thus, they are deemed to be similar.

Contested services in Class 41

The contested Computer services, namely, providing online publications, namely, reports, magazines, e-zines, newsletters, journals, white papers and supplements, and summaries thereof, on topics of professional interest, all in the fields of business, jobs, staffing, personal development and career development, computer software and hardware, recruiting and employment, and personal and career development are included in the broad category of the opponent’s Online publication of electronic books and journals in Class 41. Thus, these services are identical.

The contested Educational and informational services, namely, arranging and conducting educational conferences, seminars, tutorials and workshops in the field of rendering and obtaining services on a freelance or outsourced basis are included in the broad category or overlap with the opponent’s Arranging and conducting of colloquiums, conferences and congresses. Therefore, they are identical.

The contested cultural activities include, as a broader category the opponent’s organization of exhibitions for cultural purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested Providing a website featuring a database in the field of business training and employment training is a services that is deemed to be closely connected with the opponent’s Providing access to data bases in Class 38. These services have the same nature, purpose, origin, relevant public and distribution channels. Consequently, they are deemed to be highly similar.

The contested Education; Providing of training and the opponent’s Organization of exhibitions for cultural or educational purposes have certain points in common. Education may include, along with formal schooling, informal transmission of knowledge, skills and attitudes, which is the element it has in common with the opponent’s services. The opponent’s services may be provided by the same undertakings that provide the contested Education and Providing of training. These services may target the same relevant public and may coincide in their purpose. Therefore, they are considered similar.

The contested sporting activities are similar to the opponent’s organization of exhibitions for cultural or educational purposes. There is a relevant link between cultural activities and sports activities in the sense that they are normally carried out with the purpose of entertaining people in their spare time, and sometimes a cultural event includes sports activities or vice versa. Therefore, they may have the same purpose, distribution channels and relevant public.

The contested services of Entertainment are also similar to the opponent’s Organization of exhibitions for cultural or educational purposes. This is mainly due to the fact that these services have the same purpose and may have the same distribution channels and relevant public.

Contested services in Class 42

The contested Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software are also covered by the earlier trade mark. Thus, these services are identical.

The contested Software as a service (SaaS) services featuring software for use in database management, electronic storage of data and electronic communication, for use in matching skill sets and capabilities of workers with project requirements, for creating searchable databases of information and data, and for monitoring workers, namely, software for tracking, monitoring and recording the activities and activity level of remote and online workers; Software as a service (SaaS) services featuring software for project management, for collaboration with and multi-party access to documents, emails, videos, data, files and other information, for online project management, and for monitoring, creating and maintaining records of work performed, and for connecting workers with each other and with project vendors; Software as a service (SaaS) services featuring software that enables communication and sharing of resources among members of an online work team, and for tracking of time, tasks, expenses and other project management data and for the creation of work diaries, time sheets, invoices, expense reports and project management reports are included in the broader category of the opponent’s Software as a Service (SaaS). Therefore, they are identical.

The contested Computer services, namely, design and development of computer software programs for use by others are, notwithstanding a slightly different wording, also covered by the earlier trade mark as Design and development of software. Thus, these services are identical.

The contested Computer services, namely, consultation of computer software programs for use by others are included in the broader category of the opponent’s Information technology (IT) consulting services. Therefore, they are identical.

The contested Application service provider (ASP), namely, hosting computer software applications of others; Computer services, namely, providing non-downloadable computer software for others to facilitate and coordinate real time and asynchronous interpersonal communications and collaboration, and for sharing information; Support services, namely, software maintenance, help desk services, computer and user directory services in the field of development, deployment, use and distribution of software used to facilitate and coordinate real time and asynchronous interpersonal communications and collaboration, and for sharing information; Computer services, namely, digital content protection; Hosting web sites for others; Providing an online calendar; Providing temporary use of online non-downloadable software used to define the scope of, schedule, track and fulfill professional service projects, and to identity, source, negotiate and collaborate with, evaluate and provide feedback on vendors of professional services projects; Providing temporary use of non-downloadable computer software for the transmission, storage and sharing of data and information; Computer services, namely, providing online non-downloadable software that allows users to store data electronically and communicate electronically; Providing a secure electronic online system featuring technology which allows users to communicate, share information and resources, and engage in business and professional networking via global communication networks; Providing temporary use of non-downloadable software for use in matching skill sets and capabilities of workers with project requirements; Providing a website featuring temporary use of non-downloadable software enabling users to search, locate and communicate with others; Providing temporary use of non-downloadable software for tracking of time, tasks, expenses and other project management data and for the creation of work diaries, time sheets, invoices, expense reports and project management reports are all related to the opponent’s providing of a website featuring technology to create and manage an online marketplace for buyers and sellers of services, where buyers can view descriptions of projects and where sellers can display information about their qualifications, experience and skills to carry out the displayed projects. All of these services can have the same origin, since it is likely to expect that a company operating in the IT field may deal with all of them. Also, relevant public and distribution channels can coincide. Thus, these services are deemed to be similar.

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 to various degrees are directed at the public at large and are also specialised goods and services directed at business customers with specific professional knowledge or expertise. The degree of attention will be average.

3. The signs

	UPWORK
Earlier trade mark	Contested sign

The relevant territory is France.

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 earlier mark is a figurative mark. It consists of the word ‘HOPWORK’ depicted in ordinary black capital letters. The contested sign is a word mark, namely ‘UPWORK’. None of the marks has a meaning per se in French.

In its observations of 25/04/2016 the applicant claims that ‘the element ‘WORK’ contained in both signs is a weak element since it is a common practice for those who provide the services at issue, namely connecting freelancers with companies through a market place platform and recruiting service, both worldwide and in France, to use the term “WORK” in their company or trade name’. The applicant also submits five printouts taken from website containing reference to the word ‘WORK’ used in trade marks or company name in connection with recruiting service.

The Opposition Division considers that these claims of the applicant do not take into account the fact that the relevant public in the present case is not only the public with a certain professional knowledge or expertise but also the public at large, who does not necessarily have neither a minimum knowledge of English. Furthermore, it is not possible to conclude that the only presence of the word “WORK” in a few commercial signs or trade marks does necessarily render an English word understandable and know by the totality of the public in France. On the contrary, it has to be noted that from none of the extracts submitted by the opponent it is possible to infer the use of the word ‘WORK’ as a current word in French language. It is therefore not far-fetched to consider that for a consistent part of the relevant public the marks at hand have no meaning, nor do they allude to any concept. It is therefore on this part of the public, which necessarily also include at least a part of the business customers with specific professional knowledge or expertise, that the Opposition Division will focus its attention.

The marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their last five letters, namely ‘P-W-O-R-K’. However, they differ in the first two letters of the earlier mark, namely ‘H-O’ and in the first letter of the contested sign, namely the letter ‘U’.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PWORK’, present identically at the end of both signs. The pronunciation differs in the sound of the letters ‛O’ of the earlier sign and ‘U’ of the contested mark, taking into account that the letter ‘H’ of the word ‘HOPWORK’ is silent.

Therefore, the signs are, from an aural point of view, 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 goods and services covered by the trade marks in dispute have been found partly identical, partly similar to various degrees and partly dissimilar.

These goods and services are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention is deemed to be average. Moreover, the distinctiveness of the earlier mark must be seen as normal.

The signs are similar to the extent that they share the majority of their letters, namely the last five letters ‘-P-W-O-R-K’. The contested sign ‘UPWORK’ is almost entirely contained within the earlier mark ‘HOPWORK’, which, though a figurative mark, displays the lowest degree possible of stylization. The differences between the signs are limited to one and two letters. On the contrary, their overall structure is significantly similar being both made of two syllables, the second of which is identical and the first of which presents the same consonant “P’.

Contrarily to what stated by the applicant, the Opposition Division deems that at least a part of the relevant French public, independently of its nature of public at large or business customers, will not artificially dissect the words ‘UPWORK’ and ‘HOPWORK’ since they are made of elements which are not necessarily used and known by all the consumers in relation to goods and services in Classes 9, 35, 36, 38, 41 and 42.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings since the make reference to other territories, such as Spain in relation to the perception of the word ‘WORK’ or to shorter sings such as ‘BIO’ and ‘BRIO’ as regards the argument that the beginning of the signs may influence the effect of difference between the signs. Neither are relevant the other cases quoted by the applicant, since they make reference to marks containing descriptive elements for at least part of the public, that is not a circumstance that has not been found in the present case.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

On the contrary, in the present case account must be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In view of all the foregoing there is a likelihood of confusion because the differences between the signs are confined to only one or two letter of the marks, also considering the absence of any dominant or non‑distinctive elements in the signs for a significant part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 3 986 926. 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) EUTMR, the opposition based on this article and directed at these goods and 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 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

Michele M. BENEDETTI-ALOISI

Andrea VALISA

Vita VORONECKAITĖ

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.