OPPOSITION No B 2 670 902

pilot Hamburg GmbH & Co. KG, Neue Rabenstraße 12, 20354 Hamburg, Germany (opponent), represented by Ebner Stolz Mönning Bachem, Ludwig-Erhard-Straße 1, 20459 Hamburg, Germany (professional representative)

a g a i n s t

Bilot Oy, Itämerenkatu 5, 00180 Helsinki, Finland (applicant), represented by Boco IP OY AB, Itämerenkatu 5, 00180 Helsinki, Finland (professional representative).

On 17/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 670 902 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 889 208 is rejected in its entirety.

3. The applicant bears 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 14 889 208 ‘BILOT’. The opposition is based on European Union trade mark registration No 12 673 653 . 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.

a) The goods and services

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

Class 35: Advertising; business management; business administration; office functions; production of advertising, commercials and advertising films for radio, video, film, computers, internet websites, television and mobile devices; online advertising on a computer network; rental of advertising space, including on the internet; publicity material rental; rental of advertising time on communication media; market research, for others, including on digital networks; market research; opinion polling; merchandising; design, development and creation of corporate design, corporate identity and advertising concepts for digital media of all kinds; business management and organisation consultancy; compilation, processing and analysis of statistics; business consulting services in the field of electronic commerce; advertising agencies, in particular development of textual and graphic designs for advertising slogans, product descriptions and corporate images; brand consultancy and brand creation services; consultancy regarding communications planning and the development of communications strategies (public relations); organization and operating of promotions events; optimisation of the internet presence of others, in particular through search engine optimisation (SEO), search engine marketing (SEM), search engine advertising (SEA); affiliate marketing.

Class 42: Scientific and technological services and research and design relating thereto, in particular services in the field of the scientific recording, analysis and evaluation of advertising campaigns in newspapers, and on radio, television and the internet; scientific image and brand analysis (market research); scientific analysis and compilation of information regarding markets and target groups as a basis for media strategies in advertising and products sales; scientific analysis of the effectiveness of advertising; industrial analysis and research; design and development of computer hardware and computer software; reconstruction of databases; technical consultancy and support for the use, application and care (maintenance) of computer programs (software); design services; product design and product development; graphic design services; art studio services; website design; design of websites and computer programs for use in connection with prize draws, competitions and customer incentives; hosting of digital content, namely, online diaries and on-line blogs; information, research, advisory and consultation services in relation to all of the aforementioned services.

The contested goods and services are the following:

Class 9: Computer software; computer hardware; computer programs, recorded and downloadable; computer operating programs, recorded; computer software applications, downloadable; computer software for use in customer relationship management (CRM); computer software for use in enterprise resource planning (ERP); computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; computer software for use in master data management, business intelligence, analytics, business planning, pricing, profitability management, commerce, customer relationship management, service design, collaboration and workflow solutions, user interfaces, enterprise resource planning, big data and Internet of things.

Class 35: Business management and organization consultancy; business efficiency expert services; business management for freelance service providers; business management consultancy in regard to strategy, business process, marketing, sales, operation and product design particularly specializing in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions; search engine optimization; web site traffic optimization; outsourcing services [business assistance]; outsourcing services in the field of customer relationship management; business intelligence services; cost price analysis; systemization of information into computer databases; updating and maintenance of data in computer databases; business management and organization consultancy in the fields of master data management, business intelligence, analytics, business planning, pricing, profitability management, commerce, customer relationship management, service design, collaboration and workflow solutions, user interfaces and enterprise resource planning.

Class 42: Design and development of computer software; computer programming; development and testing of computing methods, algorithms and software; development of computer software application solutions; software programming and implementation; installation of computer software; Installation and customisation of computer applications software; technical consultancy relating to the application and use of computer software; development and implementation of software, hardware and technology solutions for electronic commerce websites; design, maintenance, development and updating of enterprise resource planning and customer relationship management software; consultancy in enterprise resource planning and customer relationship management software; software as a service [SaaS]; customer relationship management software as a service [SaaS]; enterprise resource planning software as a service [SaaS]; platform as a service [PaaS]; web site design; web site hosting services; design and development of software for automation of administrative processes; services for the digitalization of purchasing, production, sales and marketing, service production, supply chain; data mining; analytical services relating to computer programs; cloud computing; rental of computer software; rental of web servers; computer system analysis; computer system design; web site design consultancy; computer software consultancy; data conversion of computer programs and data [not physical conversion]; hosting computer sites [web sites]; information technology [IT] consultancy; updating of computer software; monitoring of computer systems by remote access; outsource service providers in the field of information technology; technological consultancy.

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

The terms ‘in particular’ and ‘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, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested goods are computer software and computer hardware in general, and also computer software for specific purposes, for example computer software for use in customer relationship management (CRM) and computer software for use in enterprise resource planning (ERP). Manufacturers of computers and/or software 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, the contested goods are considered similar to the opponent’s design and development of computer software (Class 42).

Contested services in Class 35

The contested search engine optimization; web site traffic optimization overlap with the opponent’s optimisation of the Internet presence of others, in particular through search engine optimisation (SEO). Therefore, they are identical.

The contested systemization of information into computer databases; updating and maintenance of data in computer databases are included in the broad category of, or overlap with, the opponent’s office functions. Therefore, they are identical.

The remaining contested services, as listed above, are included in the broad category of, or overlap with, the opponent’s business management. Therefore, they are identical.

Contested services in Class 42

Design and development of computer software; web site design are identically contained in both lists of services.

The contested computer programming; development and testing of computing methods, algorithms and software; development of computer software application solutions; software programming and implementation; development and implementation of software, hardware and technology solutions for electronic commerce websites; design, maintenance, development and updating of enterprise resource planning and customer relationship management software; design and development of software for automation of administrative processes; analytical services relating to computer programs; computer system analysis; computer system design; updating of computer software; monitoring of computer systems by remote access are included in the broad category of, or overlap with, the opponent’s design and development of computer hardware and computer software. Therefore, they are identical.

The contested web site hosting services; hosting computer sites [web sites] include, as broader categories, or overlap with, the opponent’s hosting of digital content, namely, online diaries and on-line blogs. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested technical consultancy relating to the application and use of computer software and the opponent’s technical consultancy and support for the use and application of computer programs (software) are synonyms. Therefore, they are identical.

The contested web site design consultancy; computer software consultancy; information technology [IT] consultancy; outsource service providers in the field of information technology; technological consultancy; consultancy in enterprise resource planning and customer relationship management software are included in the broad category of the opponent’s information, research, advisory and consultation services in relation to all of the aforementioned services. It is because the latter concerns design and development of computer hardware and computer software. Therefore, they are identical.

The contested installation of computer software; installation and customisation of computer applications software are highly similar to the opponent’s design and development of computer software. They usually coincide in their provider, relevant public and distribution channels. Furthermore, they are complementary.

The contested services for the digitalization of purchasing, production, sales and marketing, service production, supply chain; data mining are similar to the opponent’s office functions. They are provided by the same companies, they share the purpose of manipulating and collecting data and, therefore, will be found via the same channels and aimed at the same consumers.

The contested software as a service [SaaS]; customer relationship management software as a service [SaaS]; enterprise resource planning software as a service [SaaS]; platform as a service [PaaS]; cloud computing; rental of computer software; data conversion of computer programs and data [not physical conversion] are similar to the opponent’s design and development of computer software because the developers of search engines, software as a service (SaaS) and other types of software not only sell the software they develop, but also install and maintain this software. The also offer computer programs to rent. Therefore, these services can have the same distribution channels and end users and may be offered by the same providers.

On a similar line of reasoning, the contested rental of web servers are similar to the opponent’s design and development of computer hardware. They usually coincide in their providers, relevant publics and distribution channels.

b) 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 at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high as some of the goods and services in question are of a specialised nature and rather costly.

c) The signs

	BILOT
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.

The verbal element ‘pilot’ of the earlier mark is meaningful in certain territories, for example in those countries where English and Polish is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- and Polish-speaking parts of the public.

The word ‘pilot’ means in English either ‘a person who operates the flying controls of an aircraft’ or ‘a television program made to test audience reaction with a view to the production of a series’ (extracted from Oxford Dictionary on 14/01/2019 at www.en.oxforddictionaries.com). The word ‘pilot’ has the same meaning in Polish (extracted from Slownik Jezyka Polskiego on 14/01/2019 at www.sjp.pwn.pl).

The applicant argues that the word ‘BILOT’ is an acronym which means ‘Business Intelligence Lauri Otso Toni’, and now also stands for ‘Business Innovation/Integration Layer On Top of ERP’. The Opposition Division is of the opinion that it is very unlikely that the aforesaid word will be understood as indicated by the applicant as this does not appear to be a well-known fact nor did the applicant provide any evidence in this regard. Therefore, the applicant’s argument has to be set aside.

The words ‘pilot’ and ‘BILOT’ have no direct meaning for the goods and services in question, and therefore, they are distinctive. With regard to the stylisation of the letters in the earlier mark, it is rather decorative and plays a secondary role in the comparison.

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

Visually, the signs coincide in the letter sequence ‘ilot’. However, they differ in their first letters, namely ‘p’ in the earlier mark and ‘B’ in the contested sign, and also in the stylisation of the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the last four letters ‛ilot’, present identically in both signs. The pronunciation differs in the sound of ‛p’ of the earlier mark and ‘b’ of the contested sign. It should be however noted that the pronunciation of these consonants in Polish and English is quite similar as they are both produced in the front of the month, which results in very close sounds.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

d) 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 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.

e) Global assessment, other arguments and conclusion

The Court has stated that 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 contested goods and services are partly identical and partly similar (to various degrees). They target both the general public and professionals whose degree of attention may vary from average to high. The signs are visually similar to an average degree and aurally similar to an above average degree. The signs are not conceptually similar. Furthermore, the earlier mark has a normal distinctiveness.

The signs under comparison have the same last four of their five (in total) letters, namely ‘ilot’. As explained above, they differ in their first letters that will be however pronounced in a similar manner. Furthermore, the stylisation of the earlier mark plays a secondary role in the comparison. Therefore, the difference concerning the first letters in the signs is not sufficient to outweigh the visual and aural similarities. It should also be noted that consumers tend to remember the similarities rather than the dissimilarities of the signs. Account is also 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Even though the difference is positioned in the beginning of the signs, the prevailing visual and aural similarities lead to a sufficiently similar overall impression of the signs. In addition, consumers may oversee or mishear the said letters.

Considering all the above, there is a likelihood of confusion on the part of the English- and Polish-speaking parts 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 12 673 653. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Vanessa PAGE

Michal KRUK

Manuela RUSEVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.