OPPOSITION No B 2 586 454

Grand Port Maritime du Havre, Terre-Plein de la Barre, 76600 Le Havre, France (opponent), represented by Bastien Masson, 1 Rue Claude Bloch CS 15093, 14078 Caen cedex 05, France (professional representative)

a g a i n s t

ProjectSAM B.V., Oudegracht 376, 3511 PR Utrecht, Netherlands (applicant), represented by Michiel Steenhuis, Advocatenkantoor Steenhuis, Borneostraat 10, 5215 VC s-Hertogenbosch, Netherlands (professional representative).

On 17/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 586 454 is upheld for all the contested goods and services namely:

Class 9: Software containing sample-libraries; downloaded and streamed files; mobile applications (apps); electronic publications; electronic publications (downloadable); the aforementioned were in favour of the use of music production purposes, electronic databases containing sample libraries for the purpose of music production.

Class 42: Technical support and consultancy relating to so-called sampling sound and audio sampling, either via a helpdesk; research in the field of computer science and technology services in the field of sound sampling and audio sampling; computer software research and design relating to computers and computer software in the field of sound sampling and audio sampling; industrial research in the field of musical instruments and sound and audio sampling software as used in the music industry.

2. European Union trade mark application No 14 483 812 is rejected for all the contested goods and services. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 483 812, namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 11 868 254. The opponent invoked Article 8(1)(a) and (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, among others, the following:

Class 9: Apparatus for recording, transmission, reproduction or processing of sound or images; magnetic data carriers, recording discs, optical discs; data processing equipment and computers; computer software (recorded); computer peripheral devices; integrated circuit cards [smart cards]; computer software and software packages providing access to other computer software and software packages for the management, planning, organisation and operational monitoring of maritime and river ports of call and the collection and exchange of logistical customs, administrative and commercial data relating to ports of call; nationally and internationally networked software packages adapted to the technological means of telecommunications and remote transmission.

Class 42: Design and development of computer hardware and software; research and development of new products for others; technical project studies; design, installation, maintenance, updating and rental of computer software; computer programming; data conversion of computer programs and data [not physical conversion]; conversion of data or documents from physical to electronic media; design and development of computer software, for companies and/or for others, data conversion in the setting up of interfaces, upgradable and corrective maintenance of all programs.

The contested goods and services are the following:

Class 9: Software containing sample-libraries; downloaded and streamed files; mobile applications (apps); electronic publications; electronic publications (downloadable); the aforementioned were in favour of the use of music production purposes; electronic databases containing sample libraries for the purpose of music production.

Class 42: Technical support and consultancy relating to so-called sampling sound and audio sampling, either via a helpdesk; research in the field of computer science and technology services in the field of sound sampling and audio sampling; computer software research and design relating to computers and computer software in the field of sound sampling and audio sampling; industrial research in the field of musical instruments and sound and audio sampling software as used in the music industry.

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 software containing sample-libraries; the aforementioned were in favour of the use of music production purposes overlap with the opponent’s computer software (recorded). Therefore, they are considered identical.

The contested mobile applications (apps); the aforementioned were in favour of the use of music production purposes are a type of application software designed to run on a mobile device. Therefore, they overlap with the opponent’s computer software (recorded). Consequently, they are deemed identical.

The contested downloaded and streamed files; electronic publications; electronic publications (downloadable); the aforementioned were in favour of the use of music production purposes; electronic databases containing sample libraries for the purpose of music production are various types of media content copied from one computer system to another, transferred in a continuous stream while earlier parts are being used or held in a computer system. They require software in order to be downloaded, streamed, viewed, stored, updated, read, etc. Therefore, there is a complementary relation between the aforementioned goods and the opponent’s computer software (recorded). Moreover, they can originate from the same undertakings, have the same distribution channels and target the same public. Therefore, they are considered similar.

Contested services in Class 42

The contested technical support and consultancy relating to so-called sampling sound and audio sampling, either via a helpdesk overlaps with the opponent’s technical project studies. This is because the latter consist in the study of projects involving applied and industrial sciences in an objective manner to ensure their feasibility and development. The contested service may involve offering technical support and consultancy in an area concerning a technical project. Therefore, they are deemed identical.

The contested research in the field of computer science and technology services in the field of sound sampling and audio sampling; computer software research relating to computers and computer software in the field of sound sampling and audio sampling; industrial research in the field of musical instruments and sound and audio sampling software as used in the music industry are various services of research in the IT and musical fields. Therefore, they overlap with the opponent’s research and development of new products for others. Therefore, they must be considered identical.

The contested computer software design relating to computers and computer software in the field of sound sampling and audio sampling is included in the broad category of the opponent’s design of computer software. Consequently, they are identical.

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 at the public at large as well as at business customers with specific professional knowledge or expertise, in particular in the IT field (e.g. research in the field of computer science and technology services in the field of sound sampling and audio sampling; computer software research and design relating to computers and computer software in the field of sound sampling and audio sampling; industrial research in the field of sound and audio sampling software as used in the music industry in Class 42). The degree of attention may vary between average and above average given that some of the relevant goods and services are specialised and may be rather expensive.

3. The signs

S-WING	SWING!
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 non-English-speaking part of the relevant public.

The earlier mark is the word mark ‘S-WING’.

The contested sign is the word mark ‘SWING!’.

The earlier mark has no element that could be considered more distinctive than other elements.

The contested sign may be perceived by a part of the relevant public as a type of jazz music popular in the 1930s. Bearing in mind that the contested goods and services can all be related to the music industry, this element is weak in relation to the abovementioned goods and services.

Neither the earlier mark nor the contested sign has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs are composed of the same sequence of five letters, ‘S*WING’. They differ only in the dash between the letters ‘S’ and ‘W’ in the earlier mark and the exclamation mark at the end of the contested sign.

Consequently, the signs are visually highly similar.

Aurally, irrespective of the differences of pronunciation in the different parts of the relevant territory, the signs coincide in the sound of their identical first letter, ‘S’, and the sound of the sequence of letters ‘WING’. Their only aural difference lies in the dash between the letters ‘S’ and ‘W’ in the earlier mark, which will most likely be pronounced as a silent break by the relevant public, affecting the rhythm of the earlier mark by adding one syllable. Conversely, the exclamation mark at the end of the contested sign will not have any impact on its pronunciation.

In the light of the above, the signs are aurally highly similar.

Conceptually, the earlier mark has no particular meaning in the relevant territory and will be perceived as a fanciful or foreign word.

The contested mark, as described above, may be perceived by a part of the relevant public as a type of music, whereas, for the rest of the relevant public, it will most likely be perceived as a foreign or fanciful word without any particular meaning.

As a result, for a part of the relevant public, since the earlier mark will not be associated with any meaning, the signs are not conceptually similar. For the rest of the public, neither of the signs has a meaning. 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

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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

The relevant public is the non-English-speaking general public and professionals of the European Union. The degree of attention is considered to vary between average and above average.

The contested goods and services are identical or similar to the opponent’s goods and services.

The signs are almost identical given that they are composed of the same sequence of letters ‘S*WING’. Their additional characters, namely a dash between the first two letters in the earlier mark and an exclamation mark at the end of the contested sign, are not sufficient to counteract the strong visual and aural coincidences between the conflicting signs.

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).

Moreover, a heightened degree of attention does not automatically lead to a finding of no likelihood of confusion; all other factors have to be taken into account. When there is a strong likelihood of confusion created by other factors, such as close overall similarity of the marks and the identity or similarity of the goods, the attention of the relevant public cannot be relied upon to prevent confusion (26/02/2010, R 1562/2008-2, VICTORY SLIMS, § 51).

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 868 254. It follows that the contested trade mark must be rejected for all the contested goods and services.

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(1)(a) 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 applicant is the losing party, it 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

Loreto URRACA LUQUE

Steve HAUSER

Volker MENSING

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.