OPPOSITION No B 2 631 821

ICC Imagine Communications Canada Ltd., Suite 1700, Park Place 666 Burrard Street Vancouver, British Columbia V6C 2X8, Canada (opponent), represented by Lorenz & Kollegen Patentanwälte Partnerschaftsgesellschaft MBB, Alte Ulmer Str. 2-4, 89522 Heidenheim, Germany (professional representative)

a g a i n s t

Christof Hagedorn, Auf der Löh 15, 53797 Lohmar (NRW), Germany (applicant).

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

DECISION:

1. Opposition No B 2 631 821 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 569 206 for the figurative mark . The opposition is based on European Union trade mark registration No 2 462 091 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark registration No 2 462 091.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 29/09/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 29/09/2010 to 28/09/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 9: Television, video and audio signal processing, switching and generating equipment; frame synchronizers; audio synchronizers; audio synchronizers; audio delays; audio embedders/deembedders; audio processors; logo generators and inserters; sync generators and inserters; time code generators and inserters; video and audio distribution and processing amplifiers; analog to digital converters; digital to analog converters; colour encoders and decoders; clock system drivers; clock displays; automation systems; video and audio noise reducers; video and audio compression equipment; coaxial and optical fibre interfaces; test and reference generators; format converters; converters of standard television and video signals to and from high definition formats; aspect ratio converters; closed caption and other ancillary data processing equipment; multiplexers; routers; switchers and switching routers; equipment enclosures; remote control panels; computer software for controlling and monitoring the aforesaid wares.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 03/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/05/2016 to submit evidence of use of the earlier trade mark. On 12/05/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex I: Affidavit singed by the opponent’s Vice President on 04/05/2016 in which the total sales in Euros are listed in relation to the period 2010-2015 for video and audio equipment and corresponding software bearing the mark ‘NEO’ in the European Union.

• Annex II: Installation and Operation Manual for Neo ADC-3981 analog-to-digital converter, Edition B of December 2005, reprinted in 2014. The sign is displayed in the cover page.

• Annex III: Safety instruction for NEO FR-3901, FR-3903 and FR-3923 frames, Edition C of November 2011. No reference is made to software in this document. The sign is displayed in the cover page.

• Annex IV: Installation and operation manual for CSD-3902 Master Clock Driver and MTG-3901 Master Time Generator, Edition F of April 2012.

• Annex V: Installation and operation manual of IconLogo Multidefinition, Edition E of May 2010. This item is defined as a ‘multidefinition and audio GPI/GPO breakout module’.

• Annex VI: Installation and operation manual of XHD.3903 HDTV Conversion Platform, Edition F of May 2011.

• Annex VII: A photograph of MCCOM showing trade mark on the products defined as ‘New and Used Audio & Video Equipment’.

• Annex VIII: Catalogue of NEO Modular Platform, printed 2009, which include ‘a digital video recorder, a master timing generator as well as a comprehensive selction of integrated video and audio processing modules’.

• Annex IX: Online undated advertisement of a United Kingdom company displaying Harris FR-3923, XHD-3902-UCDAES and XHD-3903-USDAES described as ‘NEO 3RU Frame’, ‘NEO HDTV Downconvertor’ and ‘NEO advanced HDTV 3G-ready HDTV Up/Down/Cross Converter’.

• Annex X: Articled posted on 14/01/2014 by Gearhouse Broadcast. Reference to products in it is only made as regards ‘Imagine Communications Neo glue products’.

• Annex XI: Five purchase orders addressed to clients in The Netherlands, Germany, Italy and the United Kingdom for goods such as ‘FR-3923-E-3RU Neo Frame C/W 300 W Pow. Sup’, ‘1RU NEO FRAME, W/RESOURCE MODULE FR-3901-E’, ‘NEO 3RU FRAME W 3923PS&3901 RES-E’. No reference to the sale of software is made in any of these documents. These orders are dated in the period comprised between 12/05/2012 and 10/03/2015. The abovementioned goods are goods such as frame and audio synchronizers, analog to digital converters and clock system drivers.

• Annex XII: ‘IBC 2010 Survival Guide’ referred to the International Broadcasting Convention in Amsterdam, the Netherlands. The titles of the sections of these documents are the following: ‘A. International Media, Production, Servers & Editing’, ‘B. Infrastructure’, ‘C. Transmitters’, ‘D. Content Control Centres’.

• Annex XIII: Internally used document of the opponent dated 23/09/2011 and titled ‘Marketing Product Obsolence Pan Notification’ according to which from 23/09/2011 on or as soon as possible the status for the NEO advance HDTV 3G-ready HDTV Up/Down/Corss Converter was to be changed from Limited Supply to Active. No reference to any kind of software is made in this document.

• Annex XIV: Photographs of NEO specimens bearing the marks ‘NEO LEITCH’ and ‘NEO HARRIS’.

The Office makes its own evaluation of the evidence of use submitted. This means that the probative value of the evidence submitted is evaluated independently of the observations submitted by the applicant in this respect. Assessment of the relevance, pertinence, conclusiveness and efficacy of evidence lies within the discretion and power of judgment of the Office, not the parties, and falls outside the adversarial principle which governs inter partes proceedings (decisions of 01/08/2007, R 0201/2006-4, OCB, § 19; 14/11/2000, R 0823/1999-3, SIDOL).

In the present case, it is clear from the materials submitted by the opponent that the documents refer to different kind of goods in which different functions can be, in some cases, embedded in the same items, such as frame and audio synchronizers, analog to digital converters and clock system drivers. However, it is clear that the evidence submitted by the opponent does not contain any reference to computer software for controlling and monitoring the aforesaid wares in Class 9. In particular, no reference to software as an item that has been object of sale can be found in any of the documents in Annex XI, i.e. the purchase orders. The remaining catalogues and manuals only refer to goods which are not computer software of any kind.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In view of all the foregoing and for reasons of procedural economy, the Opposition Division assumes, to the benefit of the opponent and without further analysis of the above evidence in terms of time, place, extent, nature of use of the earlier trade mark, that use of the latter is proven for television, video and audio signal processing, switching and generating equipment; frame synchronizers; audio synchronizers; audio synchronizers; audio delays; audio embedders/deembedders; audio processors; logo generators and inserters; sync generators and inserters; time code generators and inserters; video and audio distribution and processing amplifiers; analog to digital converters; digital to analog converters; colour encoders and decoders; clock system drivers; clock displays; automation systems; video and audio noise reducers; video and audio compression equipment; coaxial and optical fibre interfaces; test and reference generators; format converters; converters of standard television and video signals to and from high definition formats; aspect ratio converters; closed caption and other ancillary data processing equipment; multiplexers; routers; switchers and switching routers; equipment enclosures; remote control panels in Class 9. Therefore, the Opposition Division assumes that the evidence shows genuine use of the trade mark only for the aforementioned goods.

The opponent has not shown use of the remaining goods in Class 9 for which the mark is registered, namely computer software for controlling and monitoring the aforesaid wares.

Consequently, the Opposition Division will only consider the abovementioned goods in Class 9 in its further examination of the opposition.

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 on which the opposition is based are the following:

Class 9: Television, video and audio signal processing, switching and generating equipment; frame synchronizers; audio synchronizers; audio synchronizers; audio delays; audio embedders/deembedders; audio processors; logo generators and inserters; sync generators and inserters; time code generators and inserters; video and audio distribution and processing amplifiers; analog to digital converters; digital to analog converters; colour encoders and decoders; clock system drivers; clock displays; automation systems; video and audio noise reducers; video and audio compression equipment; coaxial and optical fibre interfaces; test and reference generators; format converters; converters of standard television and video signals to and from high definition formats; aspect ratio converters; closed caption and other ancillary data processing equipment; multiplexers; routers; switchers and switching routers; equipment enclosures; remote control panels.

The contested goods and services are the following:

Class 9: Software.

Class 42: Software development; website development services; hosting web sites; design of web pages; hosting computer sites; hosting of computerized data, files, applications and information.

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 and the opponent’s television, video and audio signal processing, switching and generating equipment; frame synchronizers; audio synchronizers; audio synchronizers; audio delays; audio embedders/deembedders; audio processors; logo generators and inserters; sync generators and inserters; time code generators and inserters; video and audio distribution and processing amplifiers; analog to digital converters; digital to analog converters; colour encoders and decoders; clock system drivers; clock displays; automation systems; video and audio noise reducers; video and audio compression equipment; coaxial and optical fibre interfaces; test and reference generators; format converters; converters of standard television and video signals to and from high definition formats; aspect ratio converters; closed caption and other ancillary data processing equipment; multiplexers; routers; switchers and switching routers; equipment enclosures; remote control panels do not display points of contact. In today’s high-tech society almost all electronic or digital apparatus function using integrated software. This does not, however, lead to the automatic conclusion that software is similar to goods that use software to function successfully. In fact, the aforementioned goods can be used in combination. However, this does not mean that they are complementary because they are not aimed at the same public. The contested goods are for the general public, whereas the software is aimed at the actual manufacturer of these goods that, in some case, need it to function. The producers are not the same, nor are the distribution channels, and they do not have the same purpose. Neither are they in competition. Thus, these goods are must be considered dissimilar.

Contested services in Class 42

The contested software development; website development services; hosting web sites; design of web pages; hosting computer sites; hosting of computerized data, files, applications and information are not related to the opponent’s television, video and audio signal processing, switching and generating equipment; frame synchronizers; audio synchronizers; audio synchronizers; audio delays; audio embedders/deembedders; audio processors; logo generators and inserters; sync generators and inserters; time code generators and inserters; video and audio distribution and processing amplifiers; analog to digital converters; digital to analog converters; colour encoders and decoders; clock system drivers; clock displays; automation systems; video and audio noise reducers; video and audio compression equipment; coaxial and optical fibre interfaces; test and reference generators; format converters; converters of standard television and video signals to and from high definition formats; aspect ratio converters; closed caption and other ancillary data processing equipment; multiplexers; routers; switchers and switching routers; equipment enclosures; remote control panels. By nature goods and services are not similar. In this case, they do not share any point of contact. Purpose and relevant public are different. Also, it must be kept in mind that the contested services have a different origin, being normally rendered by companies specialized in the field of information technology. Neither are these goods and services complementary or in competition. Consequently, they are considered to be dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Michele M. BENEDETTI-ALOISI

Andrea VALISA

Gueorgui IVANOV

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.