OPPOSITION No B 2 997 727

Veeva Systems Inc., 4280 Hacienda Drive, Pleasanton, California 94588, United States (opponent), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shillington, SG5 3PF Hitchin, United Kingdom (professional representative)

a g a i n s t

Jan Wildberger, Holzhausenstraße 44, 60322 Frankfurt am Main, Germany (applicant), represented by Skw Schwarz Rechtsanwälte, Mörfelder Landstr. 117, 60598 Frankfurt am Main, Germany (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 997 727 is partially upheld, namely for the following contested services:

Class 42: Design of web pages; constructing an internet platform for electronic commerce; design, development, maintenance and hosting of websites for others; designing and implementing network web pages for others; hosting of digital content on the internet; internet walled garden services; providing space on the internet for weblogs; design services; IT services; computer aided industrial analysis services; providing information about industrial analysis and research services; software design and development; design and development of computer hardware.

2. European Union trade mark application No 17 004 921 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 17 004 921 for the word mark ‘viva’, namely against all the services in Class 42. The opposition is based on international trade mark registration No 1 235 543 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

In the opponent’s submissions dated 27/03/2018, the opponent informed the Office of the following:

‘The Opponent hereby drops the ground of Opposition under Article 8(5) and so the only ground of opposition is Article 8(1)(b).’

Therefore, the Opposition Division will proceed by examining the opposition only on the basis of 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.

1. The services

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

Class 42: Providing software as a service (SaaS), namely, providing on-line non-downloadable software for use in the fields of customer relationship management (CRM), marketing programs, regulated content management, and life sciences clinical trial document collection, management, and analysis.

The contested services are the following:

Class 42: Design of web pages; constructing an internet platform for electronic commerce; design, development, maintenance and hosting of websites for others; designing and implementing network web pages for others; hosting of digital content on the internet; internet walled garden services; providing space on the internet for weblogs; design services; testing, authentication and quality control; science and technology services; IT services; scientific and technological services and research and design relating thereto; industrial research; computer aided industrial analysis services; providing information about industrial analysis and research services; software design and development; software design and development; design and development of computer hardware.

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

The term ‘namely’, used 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.

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.

‘SaaS’ stands for ‘Software as a Service’, a software distribution model whereby software is centrally hosted and accessible to users over the internet on a subscription basis. This software delivery model has become common for many business applications, like those included in the opponent’s specifications.

As such, the contested hosting of digital content on the internet; internet walled garden services; IT services; computer aided industrial analysis services; providing information about industrial analysis and research services include, as broader categories, or overlap with, the opponent’s providing software as a service (SaaS), namely, providing on-line non-downloadable software for use in the fields of customer relationship management (CRM), marketing programs, regulated content management, and life sciences clinical trial document collection, management, and analysis. 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 software design and development (listed twice) is similar to the opponent’s providing software as a service (SaaS), namely, providing on-line non-downloadable software for use in the fields of customer relationship management (CRM), marketing programs, regulated content management, and life sciences clinical trial document collection, management, and analysis because companies such as the opponent's not only provide software such as the opponent's SaaS, but also design, develop, install and maintain such software. Therefore, these services can have the same distribution channels and relevant public and may be offered by the same undertakings.

The contested design of web pages; constructing an internet platform for electronic commerce; design, development, maintenance and hosting of websites for others; designing and implementing network web pages for others; providing space on the internet for weblogs are all IT services aimed at providing interfaces between internet services providers and end users. These services are essential for the setting up and use of the opponent’s services, enabling the necessary interfaces for the relevant software be accessed by the users. There is a clear functional complementarity between the applicant’s and the opponent’s services, which, by their nature, belong to the field of information technology. Moreover, they are aimed at the same public and have the same distribution channels. Therefore, they are similar (see, by analogy 29/09/2011, T-150/10, Loopia, EU:T:2011:552, § 36, 43).

The contested design services; design and development of computer hardware are services (the former of broad formulation) that are or can be dedicated to the study or use of computers, storage, networking and other physical devices, infrastructure and processes to create, process, store, secure and exchange all forms of electronic data. Consequently, they can target the same consumers as the opponent’s providing software as a service (SaaS), namely, providing on-line non-downloadable software for use in the fields of customer relationship management (CRM), marketing programs, regulated content management, and life sciences clinical trial document collection, management, and analysis. These services can be provided through the same distribution channels and rendered by the same kind of undertakings (employing professionals in the IT field), as these normally provide a full spectrum of IT solutions tailored to the needs of their customers. Therefore, these services are at least similar.

The contested testing, authentication and quality control; science and technology services; scientific and technological services and research and design relating thereto; industrial research are all services that refer to various activities performed in the field of science and technology involving, in particular, research and experimental development and contributing to the generation, dissemination and application of scientific and technical knowledge; these services are usually provided by specialists in the relevant areas, such as scientists, chemists and engineers.

Even though these activities may be the target of some applications included in the opponent’s providing software as a service (SaaS), namely, providing on-line non-downloadable software for use in the fields of customer relationship management (CRM), marketing programs, regulated content management, and life sciences clinical trial document collection, management, and analysis, this does not suffice in itself to render these services similar since, in particular, one can find IT solutions for any field of activity, including these at issue.

The services under comparison have different purposes (provision of software versus, inter alia, quality control and research in the industry field). They demand different expertise, since the applicant’s services do not necessarily require IT expertise in the form of providing software, and are not, therefore, in competition with each other or necessarily complementary. They do not have the same distribution channels and do not necessarily target the same public. The consumers of these services would not expect them be provided by the same undertaking. Therefore, they are dissimilar.

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 or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise, such as those looking for IT solutions for improving their businesses.

The degree of attention may therefore vary from average to higher than average depending on the specialised nature and application of the services, as well as their price, terms and conditions.

3. The signs

	viva
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division considers it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, since for these consumers, the coincidences between the signs will be perceived as of greater impact than their differences, for the reasons explained in detail below. It is, therefore, considered the best-case-scenario for a likelihood of confusion to arise.

Indeed, the contested sign, ‘viva’, which is a word mark, is meaningful to the public under analysis, as referring, inter alia, to ‘long live’, an exclamation for showing support to somebody or something (information extracted from Collins English Dictionary on 17/10/2018 at https://www.collinsdictionary.com). Perceived this way, the contested sign cannot be considered descriptive nor allusive of the characteristics of the relevant services and will be therefore distinctive. Moreover, its pronunciation will be identical to the earlier mark’s, i.e. /ˈviːvə/. In this case, both signs will also convey the same meaning when perceived aurally.

The earlier mark is a figurative mark which consists of the verbal element ‘veeva’ depicted in a slightly stylised typeface, where the letters ‘v’ have a truncated right stroke, and the first of them contains an inverted black triangle in the space over the vertex. This word element will not be associated with any meaning by the public under analysis, and will be therefore distinctive.

In connection to the earlier mark, when signs consist of both verbal and figurative aspects, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters ‘v**va’, that is, the first and the last two letters, present identically in both signs. However, they differ in their middle letters, namely ‘ee’ in the earlier mark and ‘i’ in the contested sign, and in the slightly stylised typeface of the earlier mark.

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

Aurally, following the reasoning above, the earlier mark and the contested sign will be pronounced by the public under analysis in the same way, that is, as /ˈviːvə/. Therefore, the signs are aurally identical.

Conceptually, when perceived visually, the public under analysis will associate the contested sign with a specific meaning (i.e. exclamation of support), and the earlier mark with no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar when they are perceived visually. However, when perceived aurally, since they are pronounced identically, the signs will be associated with the same concept (i.e. exclamation of support). Therefore, the signs will be conceptually identical when perceived aurally.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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.

5. 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically-linked undertakings.

In the present case, the services are partly identical or similar and partly dissimilar. The earlier mark enjoys an average degree of distinctiveness. The signs are visually similar to an average degree, aurally identical, and conceptually not similar when perceived visually and identical when perceived aurally.

The degree of attention of the relevant public may vary from average to higher than average. However, 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).

Moreover, the differences between the signs, namely their middle letters, ‘ee’ (in the earlier mark) and ‘i’ (in the contested sign), which do not have any aural impact for the public under analysis, as well as the slight stylisation of the earlier mark, will not enable consumers to safely distinguish between the marks, even when displaying a higher degree of attention.

In the light of the foregoing, the Opposition Division considers that the significant coincidences between the signs are clearly enough to outweigh their dissimilarities, and may induce to believe that the services found to be identical or similar come from the same undertaking or economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the English-speaking part 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 partly well founded on the basis of the opponent’s international trade mark registration No 1 235 543 designating the European Union.

It follows from the above that the contested trade mark must be rejected for all the services found to be identical or similar to those of the earlier mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Richard BIANCHI

Alicia BLAYA ALGARRA

Martina GALLE

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.