OPPOSITION No B 3 060 804

Ableton AG, Schoenhauser Allee 6-7, 10119 Berlin, Germany (opponent), represented by Iris Brandis, Schönhauser Allee 6-7, 10119 Berlin, Germany (employee representative)

a g a i n s t

Digital Virgo Entertainment SAS, 350 rue Denis Papin, CS 90554, 13594 Aix-en-Provence, Cedex 3, France (applicant).

On 10/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 804 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 323 007 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 323 007 for the word mark ‘VIRGOPUSH’, namely against all the goods and services in Classes 9, 38 and 42. The opposition is based on international trade mark registration No 1 163 780 designating the European Union for the word mark ‘Push’. 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 goods and services on which the opposition is based are the following:

Class 9: Computer peripheral devices, accessories for music and sound production; computer hardware particularly controller i.e. units for controlling other devices in connection with music via MIDI and other formats; laptop bags.

Class 42: Creating, developing, designing and supporting computer programmes and software for music processing, sound development and production.

The contested goods and services are the following:

Class 9: Computer software for creating, implementing, tracking and paying for services and content accessible via mobile and fixed-location telephones (sending and receiving of SMS and MMS, WAP, video and interactive voice services); software for the integration, adaptation and distribution of content for mobile and fixed-location telephones; software for encoding, adaptation and distribution of videos and television programmes for mobile and fixed-location telephones; games software.

Class 38: Telecommunications; transmission of messages, sound and images by computerised and telematic means, transmission of information contained in databases, transmission of information to databases by telematic means; information about telecommunication; communications by computer terminals or by fibre optic networks; communications by telephone; communications by cellular phones; providing access to a global computer information network; electronic bulletin board services [telecommunications services]; providing telecommunications connections to a global computer network; teleconferencing, videoconferencing and document sharing; electronic mail, organisation of discussion (chat) services.

Class 42: Design and development of computer hardware; research and development of new products; research and development for others; development of new products; computer programming; consultancy in the field of computers; research, design, creation (design) of new media for audiovisual communications and for the transmission of data via computerised and telematic means; research, design, implementation, development, consultancy and hosting relating to multimedia services (interactive voice services, SMS, MMS, the internet and WAP); implementation, monitoring and maintenance of computer platforms (computer software and computer hardware) for others; conducting technical project studies; design, installation, maintenance, updating and rental of computer software; conversion of computer programs and data, other than physical conversion; conversion of data or documents from physical to electronic media.

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 ‘particularly’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

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 computer software for creating, implementing, tracking and paying for services and content accessible via mobile and fixed-location telephones (sending and receiving of SMS and MMS, WAP, video and interactive voice services); software for the integration, adaptation and distribution of content for mobile and fixed-location telephones; software for encoding, adaptation and distribution of videos and television programmes for mobile and fixed-location telephones; games software are similar to the opponent´s computer hardware particularly controller i.e. units for controlling other devices in connection with music via MIDI and other formats as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

Contested services in Class 38

The contested telecommunications; transmission of messages, sound and images by computerised and telematic means, transmission of information contained in databases, transmission of information to databases by telematic means; communications by computer terminals or by fibre optic networks; communications by telephone; communications by cellular phones; providing access to a global computer information network; electronic bulletin board services [telecommunications services]; providing telecommunications connections to a global computer network; teleconferencing, videoconferencing and document sharing; electronic mail, organisation of discussion (chat) services are similar to the opponent´s computer peripheral devices in Class 9 as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested information about telecommunication is lowly similar to computer hardware particularly controller i.e. units for controlling other devices in connection with music via MIDI and other formats as they have the same purpose. They usually coincide in relevant public and distribution channels.

Contested services in Class 42

The contested design and development of computer hardware; computer programming; consultancy in the field of computers; research, design, creation (design) of new media for audiovisual communications and for the transmission of data via computerised and telematic means; research, design, implementation, development, consultancy and hosting relating to multimedia services (interactive voice services, SMS, MMS, the internet and WAP); implementation, monitoring and maintenance of computer platforms (computer software and computer hardware) for others; design, installation, maintenance, updating and rental of computer software; conversion of computer programs and data, other than physical conversion; conversion of data or documents from physical to electronic media are all services that are related to IT and/or audiovisual communications. As such, they coincide at least in relevant public and distribution channels with the opponent´s creating, developing, designing and supporting computer programmes and software for music processing, sound development and production. In addition, they are also generally rendered by the same kind of undertakings (employing professionals in the IT field), which normally provide a full spectrum of IT solutions tailored to the needs of their customers. Therefore they are at least similar, and some of them are even identical.

The contested research and development of new products; research and development for others; development of new products; conducting technical project studies overlap with, and are therefore identical to, the opponent´s creating, developing, designing and supporting computer programmes and software for music processing, sound development and production.

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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise, namely IT or telecommunication professionals.

The degree of attention may vary from average to high depending on the price, specialised nature, or terms and conditions of the goods and services purchased or provided.

c) The signs

Push	VIRGOPUSH
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 regards the contested sign, although it is composed of one verbal element, 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). The English-speaking part of the relevant public will understand, and therefore separate, the English words ‘VIRGO’ and ‘PUSH’ of the contested sign. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

A likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, since 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).

Since all of the goods and services at issue are related to IT and/or telecommunications, the element ‘PUSH’ of the earlier mark and of the contested sign will be understood by the professional part of the public (IT/telecommunication professionals) as ‘prepare (a stack) to receive a piece of data on the top; transfer (data) to the top of a stack’ (Oxford English Dictionary, online edition https://en.oxforddictionaries.com/definition/push) and this element is therefore weak. This part of the public will understand the element ‘VIRGO’ of the contested sign as a large constellation or the sixth sign of the zodiac, neither of which is related to the goods and services at issue, and this element is therefore distinctive.

For the non-professional English-speaking part of the public, the element ‘VIRGO’ will have the meaning described above, while the element ‘PUSH’ will be perceived as ‘exert force on (someone or something) in order to move them away from oneself’ (Oxford English Dictionary, online edition https://en.oxforddictionaries.com/definition/push). As none of these meanings is related to the goods and services at issue, both of these elements are distinctive.

Both marks are word marks. In the case of word marks it is irrelevant whether they are written in lower or upper-case letters or in a combination thereof since it is the word as such that is protected and not its written form.

Visually and aurally, the signs coincide in the element ‘PUSH’, which is weak for the professional public and distinctive for the general public, and which makes up the whole of the earlier mark and the last part of the contested sign. However, they differ in the distinctive and initial element ‘VIRGO’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are visually and aurally similar to at least a below average degree.

Conceptually, the signs share the meaning of the element ‘PUSH’ and differ in the meaning of the element ‘VIRGO’. Where the coinciding concept is weak, the signs are conceptually similar to a below average degree, while they are similar to an average degree where the coinciding concept is distinctive.

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

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods and services in question, for the professional part of the public. The mark has a normal degree of distinctiveness for the remaining public.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods and services are directed at the general and professional public, whose degree of attention varies from average to high, and have been found to be partly identical and partly similar to varying degrees. The signs are visually, aurally and conceptually similar to at least a below average degree. The earlier mark is distinctive to at least a low degree.

Although the differences between the signs are located at the beginning of the contested sign, a likelihood of confusion exists, as the coinciding element makes up the whole of the earlier mark, and plays an independent role in the contested sign.

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 or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of 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 well founded on the basis of the international trade mark registration No 1 163 780 designating the European Union for the word mark ‘Push’. It follows that the contested trade mark must be rejected for all the contested goods and services.

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, 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Inés GARCÍA LLEDO

Helen Louise MOSBACK

Chantal VAN RIEL

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.