OPPOSITION No B 2 884 552

Dss Network, S.L., Plaza de La Revolución de Cuba, 6-1º, 41540, Puebla de Cazalla, Spain (opponent), represented by Mercedes Ruiz-Rico Vera, Avenida del General Perón, 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 (applicant), represented by Isern Patentes y Marcas S.L., C/ Principe de Vergara 43, 6º Planta, 28001 Madrid, Spain (professional representative).

On 06/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 884 552 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 370 901 ‘BIXBY REMINDER’ (word mark). The opposition is based on the figurative Spanish trade mark registration No 3 564 198/3 . 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 41: Publication of electronic magazines.

The contested goods and services, after two limitations made by the applicant, 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 analyse user preferences, answer questions, make recommendations and provide interest information; computer programmes 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; computer software for organizing schedules of events and providing notification to remind users things to do by voice assistant and artificial intelligence assistant; 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; 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 applicant’s list of services to show the relationship of individual goods and 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 in this Class are dissimilar to the opponent’s services in Class 41. The contested goods are in the field of manufacturing IT products, inter alia telephones, computers, software, voice systems and voice software, whereas the opponent’s service is the publication of online magazines, whose aim is the publication of information to be read by the public. They are different in nature as they are goods versus services and they have different purposes as they cover different needs. Contrary to what the opponent states, the sole fact that the contested goods can be complementary to the opponent’s service does not make them similar. They are provided by different companies (companies that manufacture mobile phones, tablets and computers versus companies that publish electronic magazines), have a different method of use and are sold through different distribution channels.

Contested services in Class 42

The contested services in this Class are dissimilar to the opponent’s services in Class 41. Contrary to the opponent’s arguments, the services under comparison are related to completely different fields. The contested services are in the field of software as a service, including various types of software covering different IT needs, whereas the opponent’s service is the publication of online magazines. They relate to completely different fields. The mere fact that the opponent’s services are provided by using software does not make these services similar. They are provided by different companies (software and IT companies versus companies that publish electronic magazines) and have a different method of use; moreover, they are sold through different distribution channels.

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

The Opposition Division

Justyna GBYL

Aurelia PEREZ BARBER

Andrea VALISA

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.