CANCELLATION No 14 928 C (INVALIDITY)

DSS Network, S.L., Plaza de la Revolución de Cuba, 6-1º, 41540 Puebla de Cazalla, Spain (applicant), represented by Mercedes Ruiz-Rico Vera, Avenida del General Peron, 38, 3ª, 28020 Madrid, Spain (professional representative)

a g a i n s t

Samsung Electronics Co., Ltd., 129, Samsung-ro, Yeongtong-gu, Suwon-si, Gyeonggi-do, Republic of Korea (EUTM proprietor), represented by Isern Patentes y Marcas, S.L., C/ Principe de Vergara 43, 6º Planta, 28001 Madrid, Spain (professional representative).

On 11/05/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 16 085 904 ‘SAMSUNG Bixby’. The application is based on Spanish trade mark registration No M 3 564 198 . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs at issue are similar, and the contested goods and services in Classes 9 and 42 can have the same providers, distribution channels and relevant public as the services of the earlier mark in Class 41. Furthermore, they are complementary because they are in competition. Therefore, they are similar or complementary.

In particular, as regards the nature of the goods and services, the contested goods in Class 9 are included in the computer application software for smartphones. The specific purpose of the services covered by the earlier trade mark is to provide travel and holiday information, including information with regard to navigation, food and beverages, places of interest, whereas one of the services covered by the contested EUTM is precisely to provide this same travel and holiday information, as can be seen on the proprietor’s website. Therefore, the purpose and use of the goods and services at issue is partly the same.

What is more, since both trade marks cover software for smartphones and tablets, consumers could be led to believe that the earlier mark belongs to the EUTM proprietor, for instance, when trying to download the applicant’s smartphone application, since there is a high probability that the search results will redirect the search to the trade mark application results.

The distribution channels are undoubtedly the same, since both trade marks provide virtual assistance through phone terminals, tablets, and the internet. The popularity of the EUTM proprietor will hide the origin of the earlier trade mark, and the public will perceive it as Samsung’s assistant.

The earlier trade mark has at least an average degree of distinctiveness. Consequently, and having regard to the above findings, there is a likelihood of confusion between the trademarks at issue in respect of the complementary or similar services.

Therefore, the applicant requests the Office to uphold the present invalidity application and to declare the contested EUTM invalid.

The EUTM proprietor argues, essentially, that the contested goods and services are dissimilar to the applicant's services, and refers to a number of decisions rendered by the Office in this regard.

The fact that the goods and services are dissimilar entails that one of the conditions of Article 8(1)(b) EUTMR for the existence of a likelihood of confusion is not met, meaning that there is no likelihood of confusion.

Moreover, the EUTM proprietor argues that the trade marks at issue are also different.

For these reasons, the EUTM proprietor requests the Office to dismiss the application for a declaration of invalidity.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 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.

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

Class 41: Publication of electronic magazines.

The contested goods and services, after partial surrender, are the following:

Class 9: Smartphones; mobile telephones; portable computers; tablet computers; computer communication software to allow customers to access bank account information and transact bank business; interactive computer software for voice assistant and artificial intelligence assistant in smartphones and home appliances; interactive computer software for voice assistant and artificial intelligence assistant to analyze user preferences, answer questions, make recommendations and provide interest information; computer programs for interactive television and for interactive games and/or quizzes; interactive computer software that provides navigational information through artificial intelligence of smartphones; voice recognisers; voice processing systems; voice recognition software; none of the aforesaid goods in the field of or in relation to publication of magazines.

Class 42: Software as a service [SaaS], namely, computer software for personal information management, database management software, database synchronization software, voice recognition software, speech to text conversion software, voice-enabled software applications, computer software used to process voice commands and create audio responses to voice commands, computer software for dictation, computer software for scheduling appointments, reminders and events on an electronic calendar, computer software for organizing and accessing phone numbers, addresses and other personal contact information, computer software for enabling hands-free use of a mobile phone through voice recognition; providing temporary use of on-line non-downloadable operating software for accessing and using a cloud computing network; cloud computing services; none of the aforesaid services in the field of or in relation to publication of magazines.

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 EUTM proprietor’s list of goods and services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, according to Article 33(7) EUTMR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 9

The contested goods cover different telecommunication and data processing devices and software. All these goods, as listed above, are dissimilar to the applicant’s publication of electronic magazines in Class 41. The goods and services under comparison differ in their nature, since goods are tangible whereas services are intangible. Contrary to the applicant’s arguments, the mere fact that the applicant’s services require software support or may be delivered (downloaded) through some of the EUTM proprietor’s goods such as smartphones and tablet computers does not suffice for a finding of similarity. In this regard, it has to be noted that, nowadays, telecommunication and data processing equipment such as the contested goods are used in connection to a vast range of services in almost every business sector. The contested software is voice recognition and processing software as well as specific interactive and communication software, including for voice and artificial intelligence assistants, that support users with regard to day-to-day banking operations and navigation, provide information and recommendations based on the analysis of user preferences, as well as interactive television and games software. This software is not used directly to access electronic publications on smartphones or tablet reading devices. The contested software and the earlier publishing services concern different fields of application. Publishers are not normally engaged in the development of software. The goods and services are clearly provided by different undertakings with expertise in completely different areas, serve different purposes, and are neither complementary to nor in competition with each other.

Contested services in Class 42

The contested services concern software as a service as well as the provision of temporary use of software and cloud computing. All the contested services, as listed above, are dissimilar to the applicant’s publication of electronic magazines in Class 41. Computer services are used in nearly all business sectors. However, that does not mean that the services are similar. Contrary to the applicant’s arguments, the services in question are related to completely different fields. The applicant’s services are related to the publishing sector whereas the contested services are IT services. Consequently, they are different in nature, do not serve the same purpose, are not provided by the same undertakings and do not target the same public. In addition, they are neither in competition with each other, nor are they complementary.

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 application must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Judit NÉMETH

Natascha GALPERIN

Robert MULAC

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 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.