OPPOSITION No B 2 980 103

Gigas Hosting, S.A., Avda. Fuencarral, 44, Edificio 1, 28108 Alcobendas, Madrid, Spain (opponent), represented by Hoyng Rokh Monegier Spain LLP, Calle Príncipe de Vergara 36, 5º Dcha, 28001 Madrid, Spain (professional representative)

a g a i n s t

Unitymedia GmbH, Aachener Str. 746-750, 50674 Köln, Germany (applicant), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62,
50674 Köln, Germany (professional representative).

On 21/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 980 103 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 (in Classes 9, 35, 36, 37, 38, 41, 42 and 45) of European Union trade mark application
No 16 883 605 (word mark: ‘GIGAWorld’). The opposition is based on international registration designating the European Union No 1 182 323 and Spanish trade mark registration No 2 965 806 (both word marks: ‘GIGAS’). The opponent invoked Article 8(1)(b) EUTMR for both earlier trade marks and Article 8(5) EUTMR (for only the earlier Spanish trade mark).

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 in Classes 38 and 42 on which the opposition is based are the following:

Class 38: Access services and rental of access time to computer databases and servers, provision of electronic exchange of data stored in databases accessible via telecommunication networks and provision of Internet access.

Class 42: Technological services, specifically Infrastructure as a Service (IaaS), cloud hosting, hosting of servers and network equipment in the cloud and hosting of websites, e-commerce sites, computer applications and digital content and data.

The contested goods and services in Classes 9, 35, 36, 37, 38, 41, 42 and 45 are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for capturing, receiving, recording, transmission, distribution, processing, conversion or reproduction of data, sound or images; Magnetic data media; Phonograph records; Mechanisms for coin-operated apparatus; Cash registers; Calculators; Data processing apparatus; Computers; Fire-extinguishing apparatus, Recorded content; Computer programs and software; Downloadable digital publications; Computer databases; Mobile apps; Information technology and audio-visual, multimedia and photographic devices; Parts and accessories for all the aforesaid goods, included in this class.

Class 35: Procurement services for others [purchasing goods and services for other businesses]; Order placement and delivery services and invoice management, including within the framework of e-commerce; Import-export agencies; Auctioneering, including on the Internet; Invoicing; Modelling for advertising or sales promotion; Market research; Marketing, including on digital networks; Merchandising; Arranging and conducting of advertising events; Employment agencies; Marketing planning and organizational services; Presentation of companies and their products and services, including on the Internet and other electronic media; Radio advertising; sponsorship in the form of advertising; Telemarketing services; Arranging and conducting of trade fairs, exhibitions and events for advertising, commercial and sales promotion purposes, including on the internet and other electronic media; Writing of publicity texts; Sales promotion, for others; Providing of addresses for advertising purposes; Administrative order processing; Demonstration of goods; Goods and services presentations; Advertising; Advertisement for others on the Internet; Collection of goods, for others, for presentation purposes; The bringing together, for the benefit of others, of the following goods, for sales purposes: information technology, audiovisual, multimedia and photographic apparatus, optical apparatus and equipment, amplifiers and correctors, safety, security, protective and signalling apparatus and equipment, navigation, guidance, location tracking, target tracking and mapping devices, measuring, detecting and monitoring instruments, devices and regulators, recorded data; On-line advertising on a computer network; Television advertising; Conducting of competitions and prize games for advertising purposes; Telephone answering [for unavailable subscribers]; rental of advertising time on communicationmedia; Dissemination of advertising matter; Rental of advertising and presentation space, including on the internet; Capture; Compilation, systemisation, updating and maintenance of information and data in databases; Providing of product information which can be accessed from databases or from the internet; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Class 36: Financial sponsorship for social, medical, scientific and similar charitable purposes; Organization of collections; Fundraising and sponsorship; Rental and leasing of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Class 37: Computer hardware (Installation, maintenance and repair of -); Machinery installation, maintenance and repair; Telephone installation and repair; Film projector repair and maintenance; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Class 38: Telecommunications; Assisting others in providing cable television communications services; Electronic bulletin board services [telecommunications services]; Providing user access to global computer networks; Providing telecommunications connections to a global computer network; Television broadcasting, In particular the supplying, transmission and broadcasting of television programmes in analogue and digital form or via satellite on broadband cable networks and the internet; Communications by telephone; Cable television broadcasting; Communications by fibre optic networks; Cabling, routing and connection services for telecommuications; Computer aided transmission of messages and images; Transmission of electronic mail; Rental of message sending apparatus; Paging services [radio, telephone or other means of electronic communication]; Radiobroadcasting; Broadcasting; Telephone services; Telegraph services; Communication by telegram; Telegrams (sending of -); Telegram transmission; Information about telecommunication; Teleconferencing services; Fascimile transmission; Rental of modems; Rental of telephones; Providing internet chatrooms; Provision of portals on the Internet; Providing telecommunications channels for teleshopping services; broadcasting of teleshopping programs; Providing chatlines, chat rooms and forums on the Internet; Communications by computer terminals; Transmission of electronic mail; Services provided by a teleprinter; Radio and telephone paging services; Message sending; Forwarding of messages of all kinds to Internet addresses (web messaging); Broadband communications, in particular transmission of data/messages; Transmission of internet data/messages; Telecommunications for operating WLAN networks; Telecommunications for operating radio networks; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Class 41: Providing on-line electronic publications, not downloadable; Recording studios; Entertainer services; Recording studio services for television; Performances (Presentation of live -); Games on the Internet; Photographic reporting; Television entertainment; Film production services; Movie studios; Gambling; Production of shows; Radio entertainment; Advance ticket sales and ticket reservations for entertainment events; Entertainment; Production of television programmes; Services for the production of radio programmes; Rental of radio and television sets; Rental of motion pictures; Game services provided on-line from a computer network; Rental of audio equipment; Rental of sound recordings; Tuition; Providing of training; Arranging and conducting of seminars; Correspondence courses; Correspondence courses; Education information; Arranging and conducting of meetings, exhibitions for cultural or educational purposes, congresses, seminars, symposiums, training sessions, courses, conferences, lectures and workshops (providing of training); Organisation and arranging of competitions (education and entertainment) and seat and ticket reservations for the aforesaid competitions; Charitable involvement, namely arranging and conducting of events in the fields of science, training and education, art and culture, environmental protection, and social affairs and sport; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Class 42: IT services, namely development, programming and implementation of software; Computer hardware development; Hosting of computer sites (websites); Software as a service (SaaS) and rental of software; Rental of computer hardware and facilities; IT consultancy and information; IT security, protection and repair; data duplication and conversion services; data coding services; Computer analysis and diagnostics; Research and development, and implementation of computers and computer systems; Computer project management; Data mining; Digital water-marking; Computer service; Technological services relating to computers; Computer network services; Updating the memory banks of computer systems; Data migration services; Design, maintenance and updating of websites, for others; Monitoring of computer systems by remote access; Rental of computers and computer software; Technological services and research; Testing, authentication and quality control; Design services; Digital image processing (graphic design); Providing of technical internet platforms for broadcasting analogue and/or digital programme formats; Providing platforms on the Internet; Rental of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Class 45: Licensing of intellectual property; Rental and leasing of objects in connection with the providing of the aforesaid services, included in this class; Consultancy and information in relation to the aforesaid services, included in this class.

Some of the contested goods and services are identical or similar to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

GIGAS	GIGAWorld
Earlier trade mark(s)	Contested sign

The relevant territories are the European Union for the earlier international registration and Spain for the earlier Spanish trade mark registration.

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).

All the signs are word marks, which are protected in all different typefaces.

The clearly recognizable word ‘WORLD’ of the contested sign describes, that the goods and services can be offered worldwide. Therefore, it is non-distinctive for the goods and services.

The very similar words ‘GIGA’/‘GIGAS’ of the signs are derived from the Greek word γίγας, meaning ‘giant’. It denotes (in units of measurement) a factor of 10⁹ (e.g. ‘gigahertz’). In computing it denotes a factor of 2³⁰ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/giga-). The word is familiar in computer terminology as a unit of measurement for media storage or memory and it is known colloquially as denoting something large or a large amount of something. The prefix ‘giga-‘ indicates something larger than ‘super’. Colloquially, the use of ‘Giga’ in this sense in word combinations is common. In particular, the word ‘gigabyte’ is internationally known in the extended vocabulary of the IT field. Other comprehensible words including the prefix ‘giga’ are, inter alia, ‘Gigaevent’, ‘Gigaproject’, ‘Giga-Fusion’, ‘Giga Jackpot’, ‘Gigabomb’ and ‘Gigaflop’. The letter ‘S’ at the end of the earlier trade marks may be seen as the plural form of ‘GIGA’ or as an expression meaning something extraordinary. Therefore, the elements ‘GIGA’/‘GIGAS’ have a very low degree of distinctiveness for all the goods and services in question (see, by analogy, 15/01/2013, T‑451/11, Gigabyte, EU:T:2013:13, § 86).

However, the combination of the word elements ‘GIGAWorld’ is somehow distinctive being a fanciful word combination.

Visually and aurally, the signs are of different lengths: the earlier trade marks comprise five letters, while the contested sign comprises nine letters and therefore is almost twice the length of the earlier marks. The element ‘WORLD’ is only part of the contested sign. All the elements of the signs are very weak respectively non-distinctive. However, the word combination of the contested sign is somehow fanciful and has, therefore, to be taken into account to a certain degree. However, taking into account the different lengths of the signs and their different sounds, pronunciations and rhythms, the signs are visually and aurally similar to a low degree; furthermore, their similarities are based on very weak respectively non-distinctive elements.

Conceptually, all the elements of the signs are (very) weak, non-distinctive or will not be understood by the relevant public. Since (very) weak respectively non-distinctive elements cannot have any relevant influence on the outcome of the conceptual comparison, the findings are neutral.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark(s)

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 claimed that the earlier Spanish trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim. The opponent did not explicitly claim that its international mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for all the services in question.

e) Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

The contested goods and services have been assumed as identical.

Taking into account the low degree of visual and aural similarity, the neutral outcome of the conceptual comparison, the average degree of attention of the public and the low degree of distinctiveness of the earlier trade marks, there is, even for assumed identical goods and services, no likelihood of confusion. This applies even more so when the relevant public’s degree of attention is high.

The opponent has not submitted any reasons for the opposition. Therefore, its arguments cannot be examined.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR (for the earlier Spanish trade mark)

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T 345/08 & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade mark

There was no evidence filed by the opponent to prove the reputation and highly distinctive character of the earlier trade mark, as explained above in the examination under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) 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

Lars HELBERT

Peter QUAY

Gonzalo BILBAO TEJADA

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.