OPPOSITION No B 2 529 827

Gruner + Jahr GmbH & Co KG, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Marco Gaboardi, Via Vecchie Fornaci 26, 17028 Spotorno, Italy, and Francesco Callieco, Via Carlo Maciachini, 20, 27100 Pavia, Italy (applicants).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 529 827 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 761 309 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 761 309. The opposition is based on, inter alia, German trade mark registration No 39 533 432. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 39 533 432.

1. The goods and services

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

Class 42: Computer programming, including programs in connection with data carriers or data networks.

The contested goods and services are the following:

Class 9: Computer application software; computer application software for mobile telephones; computer software applications, downloadable.

Class 42: Installation and customisation of computer applications software; development of computer software application solutions; application service provider services; application service provider (ASP).

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

The term ‘including’, used in the opponent’s list of 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

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.

Contested goods in Class 9

The contested computer application software; computer application software for mobile telephones; computer software applications, downloadable are various types of software. The opponent’s services include programming, which is the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer (but also a telephone), to perform a desired sequence of operations. The opponent’s computer programming, including programs in connection with data carriers or data networks is closely linked to software. 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) and manufacturers of mobile phones commonly provide mobile phone- and/or software-related services.

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.

Contested services in Class 42

The contested customisation of computer applications software is included in the broad category of the opponent’s computer programming, including programs in connection with data carriers or data networks. Therefore, they are identical.

The contested development of computer software application solutions is synonymous with computer programming and is therefore identical to the opponent’s computer programming, including programs in connection with data carriers or data networks.

The contested application service provider services; application service provider (ASP) are services rendered by a vendor that provides individual users – or an entire enterprise – with software applications over a network, usually a local area network (LAN) or a LAN with internet access. The software provided may be referred to as software as a service, apps on tap or on-demand software (definition from www.techopedia.com). The aforementioned services cannot be rendered without the opponent’s computer programming, including programs in connection with data carriers or data networks; therefore, these services are complementary. Accordingly, they may target the same consumers, may be offered or marketed by the same undertakings and are likely to be distributed through the same channels. Therefore, these services are considered highly similar.

The contested installation of computer applications software is highly similar to the opponent’s computer programming, including programs in connection with data carriers or data networks, as these services are usually provided by the same companies, to the same users, have similar natures, are complementary and are offered through the same trade channels.

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 aimed at the public at large as well as business customers, who may or may not have knowledge in the relevant area (e.g. computer programming services could be acquired by a larger company that has an IT expert available internally or by a smaller company that does not have an IT expert). The degree of attention will vary from average to higher than average depending on the price and sophistication of the goods and services, as some of the relevant goods and services can have a serious impact on the client’s operations (e.g. development of computer software) while others can be relatively cheap and less important for the user (e.g. software applications for use with mobile phones).

3. The signs

P.M.
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word mark composed of two letters, each followed by a full stop. The sign has no meaning in relation to the relevant services and is, therefore, distinctive. It is important to note that in word marks it is the verbal elements themselves that are protected and not their written form.

The contested sign is a figurative mark composed of a device that will be perceived by the majority of the public as the stylised letters ‘PM’ with a dot and half a dot placed above them. The letters will be perceived despite the fact that the letter ‘P’ is reversed. Although this is not conclusive in itself, in the application for the EU trade mark the applicants indicated that the sign applied for contains the verbal elements ‘PM’. However, it cannot be excluded that a part of the public might not perceive the letters in the sign and might consider it as a purely figurative sign.

According to the case law, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the substantial part of the public that will perceive the contested sign as containing the letters ‘PM’.

For this part of the public, the letters ‘PM’ of the contested sign have no meaning in relation to the relevant goods and services and this element is, therefore, distinctive. The figurative elements/aspects of the sign, namely the letter ‘P’ being reversed, the dot and half a dot above the letters and the stylised typeface of these letters, are rather unusual and are not only decorative; therefore, the figurative depiction of the sign is considered distinctive.

However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4, Best Tone (fig.) / Betstone (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / device of an elephant (fig.), § 59).

Visually, the signs coincide in the letters ‘P’ and ‘M’, present in both signs, and differ in their graphic depiction, namely the standard typeface in the earlier mark and the stylised typeface and reversed letter ‘P’ in the contested sign. The signs further differ in the additional figurative elements of the contested sign, namely the dot and half a dot, as well as the full stops that follow each letter of the earlier mark.

As was indicated above, the letters ‘P’ and ‘M’ are distinctive for the goods and services at issue, and in signs that are composed of verbal and figurative elements it is the verbal elements that are more important. Therefore, despite the stylisation of the letters of the contested sign (including the reversal of the letter ‘P’) and the additional elements of both signs, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs is identical. Neither the full stops in the earlier mark nor the figurative elements of the contested sign will be 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.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

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

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are identical, highly similar and similar. The signs are visually similar to an average degree and aurally identical, and the conceptual aspect does not affect the perception of the signs.

The signs in dispute have two letters; both are, consequently, short marks. It follows from case law that, when two conflicting signs include or consist of the same combination of two letters, a likelihood of confusion can be safely excluded only when they are stylised in a sufficiently different way or contain a sufficiently different figurative element so that their different overall graphical depiction eclipses the verbal element they have in common.

In the opinion of the Opposition Division, that is not the case in the present proceedings. The earlier mark is the word mark ‘P.M.’ and the contested sign reproduces it, as its only verbal element is the same letter combination, ‘PM’. While it is true that these letters in the contested sign are stylised (as described in detail in section c) above), this does not preclude the public in the relevant territory from immediately perceiving them as such.

Account is 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).

Therefore, the Opposition Division is of the opinion that, even considering that some of the relevant public are businesses or professionals in the relevant area and some of the goods and services can be expensive and sophisticated, all of which possibly results in a higher than average degree of attention, the differences between the signs are not sufficient to safely exclude the likelihood of confusion in relation to the identical and similar goods and services.

When encountering the contested sign, consumers may perceive it as a figurative version of the earlier word mark, ‘P.M.’, and consequently be led to believe that the goods and services that are identical and similar to various degrees originate from the same undertaking or economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public that perceives the contested sign as containing the letters ‘PM’. 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.

It is also noted that the applicants have not submitted any arguments in response to the notice of opposition and the opponent’s arguments that could convince the Opposition Division otherwise.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 39 533 432. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

As the earlier right German trade mark registration No 39 533 432 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicants are the losing party, they must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gailė SAKALAITĖ

Vita VORONECKAITE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.