OPPOSITION No B 2 931 585

Verne Global Ltd, Hays Galleria, 1 Hays Lane, SE1 2RD, London, United Kingdom (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, EC4A 1JP, London, United Kingdom (professional representative)

a g a i n s t

Centrepoint Verne a.s., 1, 25264, Lichoceves, Czech Republic (applicant), represented by Advokátní Kancelář Belha, Vacíř & Spol., s.r.o., Náměstí Jiřího z Poděbrad 1382/2, 12000, Praha 2 – Vinohrady, Czech Republic (professional representative).

On 26/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 931 585 is upheld for all the contested services

2. European Union trade mark application No 16 529 018 is rejected in its entirety.

3. The applicant bears the costs fixed at EUR 620

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 529 018 for the word mark ‘DATAHUB VERNE’. The opposition is based on European Union trade mark registration No 16 103 798 for the word mark ‘VERNE’ and European Union trade mark registration No 15 064 322 for the word mark ‘VERNE GLOBAL’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s from European Union trade mark registration Nº 16 103 798.

1. The services

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

Class 35: Data management; database management; data retrieval; compilation and collation of data in computer databases; compilation and collation of data into computer databases; collection, compilation and systemisation of data and information in databanks; collection, compilation and systemisation of business data; administrative data processing; data processing; provision of information, advice and consultancy in relation to energy efficiency; information, consultancy and advice relating to these services.

Class 42: Data centre services involving data storage services, electronic data backup and archiving, providing back-up computer programs and equipment, installation and maintenance of internet access software, computer firewall services, computer virus protection services, computer technical support services, hosting services and rental of computer hardware equipment;  computerised data storage and data back-up services; electronic data storage and data back-up services; data security services; process monitoring (data centre management);  compression of data for electronic storage; development of systems for the storage of data; providing tools for the electronic storage of digital data; disaster recovery services; hosting services; cloud computing services; software as a service (SaaS) services; infrastructure as a service (IaaS) services; platform as a service (PaaS) services; rental of computer hardware, computer software and computer peripherals; hosting of databases; server hosting and server administration; hosting of digital content; hosting of digital content in the form of on-line journals and blogs; providing information relating to the environment, climate change, carbon reduction, carbon emissions, energy efficiency and global warming; information, consultancy and advice relating to these services.

The contested services are the following:

Class 35: Updating and maintenance of data in computer databases; on-line advertising on a computer network; web site traffic optimization; search engine optimization for sales promotion; providing business information via a web site; compilation and input of information into computer databases; collating of data in computer databases; systemization of information into computer databases; computerized file management; data search in computer files for others.

Class 38: Communications by fibre optic networks; communications by computer terminals; providing access to internet forums; providing online forums; providing access to databases; providing telecommunications connections to a global computer network; providing user access to global computer networks; rental of access time to global computer networks; rental of telecommunication facilities; transmission of digital files; transmission of electronic mail [e-mail data services]; computer aided transmission of messages and images; streaming of data; electronic transmission of messages (services for the -).

Class 42: Updating of computer software; computer system analysis; cloud computing; off-site data backup; hosting web sites; installation of computer software; conversion of computer programs and data, other than physical conversion; duplication of computer programs; computer virus protection services; computer programming; information technology consulting; internet security consultancy; consultancy in the design and development of computer hardware; consultancy with regard to webpage design; computer hardware and software consultancy; computer technology consultancy; data security consultancy; data encryption services; data security services; computer security consultancy; rental of computer software; computer rental; rental of web servers; monitoring of computer systems for detecting unauthorized access or data breach; monitoring of computer systems to detect breakdowns; writing of computer software; computer system design; maintenance of computer software; electronic data storage and data back-up services; creating and maintaining web sites for others; monitoring of computer systems by remote access.

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 services in Class 35

The contested updating and maintenance of data in computer databases; compilation and input of information into computer databases; collating of data in computer databases; systemization of information into computer databases; computerized file management; data search in computer files for others fall into the broader category of the opponent´s data management, being, therefore, identical.

Providing business information via a web site overlaps with the opponent´s provision of information, advice and consultancy in relation to energy efficiency, being therefore, identical.

The contested; web site traffic optimization; search engine optimization for sales promotion are those which consist of the process of maximizing the number of visitors to a particular website by ensuring that the site appears high on the list of results returned by a search engine. All these contested services are involved in the process of improving the visibility of a website in a search. To that extent, they are similar to a low degree to the opponent´s provision of information, advice and consultancy in relation to energy efficiency as they can have the same purpose and relevant public.

The contested on-line advertising on a computer network are similar to a low degree to the opponent´s provision of information, advice and consultancy in relation to energy efficiency as they can have the same purpose and relevant public.

Contested services in Class 38

All contested services in Class 38 are, different telecommunications services and to that extent, they all are similar to the opponent´s server hosting and server administration in Class 42 as they have the same purpose. They usually coincide in producer and distribution channels. Furthermore they are complementary.

Contested services in Class 42

The contested off-site data backup is identical to the opponent´s broader category of computerised data storage and data back-up services.

The contested cloud computing; computer virus protection services; data security services and electronic data storage and data back-up services; rental of computer software are identically contained in both lists of services.

The contested hosting web sites are included in the broad category of, or overlap the opponent’s hosting of digital content. Therefore, they are identical.

The contested computer rental includes as a broader category the opponent’s rental of computer hardware equipment. Therefore, they are identical.

The contested updating of computer software; installation of computer software; computer programming; computer system design; writing of computer software; maintenance of computer software are contained in the opponent´s broader category software as a service (SaaS) services which is a model for the distribution of software where customers access software over the Internet being therefore, identical.

The contested computer system analysis; monitoring of computer systems for detecting unauthorized access or data breach; monitoring of computer systems to detect breakdowns; monitoring of computer systems by remote access; data security consultancy; information technology consulting; internet security consultancy; consultancy in the design and development of computer hardware; consultancy with regard to webpage design; computer hardware and software consultancy; computer security consultancy; computer technology consultancy; conversion of computer programs and data, other than physical conversion; duplication of computer programs; data encryption services and creating and maintaining web sites for others are similar to the opponent´s computer technical support services as they share the same distribution channels, relevant public and provider.

The contested rental of web servers is similar to the opponent´s rental of computer hardware, computer software and computer peripherals as they share the same nature, distribution channels, relevant public and provider.

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 services found to be identical are specialised services directed at business customers with specific professional knowledge or expertise, such as specialists in IT. As the degree of specialisation of the services, as well as their costs, may vary significantly, it is considered that the degree of attention may also vary from average to high.

3. The signs

VERNE	DATAHUB VERNE
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).

As pointed out by the applicant, the sources brought by the opponent in Annex A, namely yourdictionary.com or wiktionary.com in order to prove the existence of the word ‘DATAHUB’ as such, should be treated with caution. The Opposition Division notes that such extracts include information lacking certainty, as they are taken from a collective encyclopaedia established on the Internet, the content of which may be amended at any time and, in certain cases, by any visitor, even anonymously (see, to that effect, 16/06/2016, T-614/14, KULE, EU:T:2016:357, § 47). Moreover, the Opposition Division points out that the relevant public, even if professional, does not necessarily possess the required IT knowledge to know that ‘DATAHUB’ exists in the said field, therefore such evidence and the relevant presumed knowledge, must be set aside, at least for part of the consumers in question.

The above conclusion, however, is counteracted by the fact that the first verbal element of the contested sign ‘DATAHUB’ will certainly be dissected into two words that are meaningful in English, namely ‘DATA’ and ‘HUB’. For that reason, the Opposition Division finds appropriate to first focus the comparison on the English-speaking part of the public as the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

Moreover, 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 term ‘DATA’ will be perceived as ‘the information operated on by a computer program’. This is a very commonly used word, especially in the IT and computing field; consequently, it is considered to be descriptive for the relevant services which are related, broadly speaking, to data processing management. As far as ‘HUB ’is concerned, it will be associated with ‘the most important place where a particular activity takes place’. As a whole, ‘DATAHUB’ will be easily understood as a reference to ‘a hub to deal with data’ which describes the nature and purpose of the part of the relevant services and is therefore non-distinctive regarding them and allusive with respect to the others, since all relevant services are IT-related.

The word ‘VERNE’ contained in both marks would generally be meaningless for the relevant public and, therefore, remains distinctive for the conflicting services. The Opposition Division takes note of the applicant´s information that ‘VERNE’ is a place or district in Czech Republic and a geographical indication of the place of origin of the services being provided. This finding, however, is not convincing for the Opposition Division that sees unlikely that the majority of the relevant public of the present decision could know about the existence of the said region and could, therefore, make the pretended association. Moreover, the furnished evidence only show that ‘VERNE’ is the name of an industrial zone in the Czech Republic, and not of a geographical place.

In the words of the applicant, the element ‘VERNE’ of which both marks are composed gives ‘hundreds of hundreds of results’ in TM View and for this reason, its distinctive character could be diminished

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘VERNE’. Under these circumstances, this applicant’s claim must be also set aside.

For all the above, contrary to the applicant´s assertions, ‘VERNE’ is considered to be the most distinctive element of the contested sign.

The Opposition Division wishes to remind that word marks have no dominant elements by definition. As in the present case, both signs are word marks, all the arguments related to dominance areirrelevant in the present proceedings.

Visually, the signs coincide in the verbal element ‘VERNE’, which is the only verbal element in the earlier mark and the most distinctive element of the contested sign. The signs differ in the other verbal element of the contested sign, ‘DATAHUB’, considered to be descriptive

Therefore, the signs are similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛/VERNE/’, present identically in both signs. The pronunciation differs in the additional word ‘/DATAHUB/’’ in the contested sign, considered to be descriptive.

Therefore, the signs are considered to be aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the common element ‘VERNE’ has no particular meaning for the majority of the relevant public, the signs are not conceptually similar.

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as average.

5. Global assessment, other arguments and conclusion

The relevant public are the general public as well as professionals with specific knowledge and their degree of attention ranges from average to high. The earlier mark enjoys a normal degree of distinctiveness which affords it an average degree of protection. The services have been found to be either identical or similar at varying degrees.

The signs are visually and aurally similar to a high degree while conceptually the signs are not similar,

Admittedly, there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, however this finding does not preclude neither the existence of likelihood of confusion nor the finding of a similarity between the signs. This finding is all the more true when the differing element ‘DATAHUB’ lacks or is weakly distinctive.

Moreover, 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). In the present case, special consideration has to be given to the fact that 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).

In the light of all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows that the contested trade mark must be rejected for all the contested services. This conclusion stands as well for the contested services found to be similar to a low degree. This is because likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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 (judgment of 29/09/1998, C39/97, Canon, EU:C:1998:442, § 17). In the present case, the high visual and aural similarities between the signs outweigh the low similarity between some of the goods.

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

Teodora TSENOVA-PETROVA

Alexandra APOSTOLAKIS

Richard BIANCHI

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.