OPPOSITION No B 3 024 414

Ableton AG, Schönhauser 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

Saša Janićijević, Gundulićeva 3, 10 000 Zagreb, Croatia (applicant), represented by Dina Slunjski, Ilica 1A/III, 10 000 Zagreb, Croatia (professional representative)

On 15/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 024 414 is partially upheld for the following goods and services:

Class 9: Recorded content; Computer databases; Databases; Databases (electronic); Electronic databases; Computer digital maps; Computer programmes; Computer programs; Computer software programs; Computer software [programmes]; Computer software; Data banks; Data recorded electronically; Directories [electric or electronic]; Media content; Recorded data files; Recorded data [magnetic]; Electronic databases recorded on computer media; Software; Software for computers; Timetables (Electronic -); Audio books; Audio recordings; Audio visual recordings; Digital books downloadable from the Internet; Downloadable digital photos; Downloadable e-books; Downloadable electronic books; Downloadable educational course materials; Downloadable electronic publications; Electronic publications, downloadable; Downloadable electronic newspapers; Downloadable electronic brochures; Downloadable electronic reports; Downloadable electronic newsletters; Downloadable electronic maps; Downloadable instruction manuals in electronic form; Downloadable electronic publications in the nature of magazines; Downloadable publications; Publications (Electronic -), downloadable; Publications in electronic format [downloadable]; E-books; Electronic publications; Publications in electronic format; Electronic publications recorded on computer media; Instruction manuals in electronic format; Recorded film; Recorded films; Recorded video tapes; Talking books; Training manuals in electronic format; Training manuals in the form of a computer program; Video films; Video recordings; Weekly publications downloaded in electronic form from the internet; Computer programmes [programs], recorded; Computer programmes, recorded; Computer programmes stored in digital form; Computer programs [downloadable software]; Children's educational software; Computer programs, recorded; Computer software applications, downloadable; Computer software applications; Computer software concerned with children's education; Computer software downloadable from global computer information networks; Computer software downloaded from the internet; Computer software, recorded; Computer software supplied from the Internet; Computer software supplied on the Internet; Downloadable software in the nature of a mobile application; Computer software for mobile phones; Computer software for use on handheld mobile digital electronic devices and other consumer electronics; Computer software packages; Computer software platforms; Computer software platforms, recorded or downloadable; Downloadable application software for smart phones; Downloadable applications for use with mobile devices; Downloadable applications for mobile devices; Downloadable smart phone applications (software); Downloadable mobile applications; Downloadable computer software; Downloadable computer software applications; Downloadable software; Education software; Educational software; Master of Education software; Mobile apps; Mobile app's; Mobile application software; Packaged software; Pre-recorded software; Programs (Computer -) [downloadable software]; Programs for computers; Recorded computer programmes; Recorded computer software; Recorded computer programs; Smartphone software applications, downloadable; Software and applications for mobile devices; Software applications; Software applications for use with mobile devices; Software (Computer -), recorded; Student software; Training software; Virtual classroom software; Data storage devices; Animated films; Records [sound recordings]; Series of musical sound recordings; Sound recordings; Tape recordings of music; Downloadable digital music; Digital music downloadable from the Internet; Digital music downloadable provided from the internet; Digital music downloadable provided from MP3 internet websites; Digital music downloadable provided from MP3 internet web sites; Downloadable digital music provided from MP3 Internet web sites; Digital music [downloadable] provided from mp3 web sites on the internet; Digital music downloadable provided from a computer database or the internet; Downloadable films; Downloadable image files; Downloadable movies; Downloadable music files; Downloadable musical sound recordings; Downloadable podcasts; Downloadable video files; Do Motion picture films; Motion pictures; Prerecorded motion picture videos; Pre-recorded motion picture films; Multi-media recordings; Music recordings; Musical recordings; Musical sound recordings; Musical video recordings; Podcasts; Pre-recorded audio tapes; Pre-recorded films; Prerecorded digital audio tapes; Prerecorded music audio tapes; Prerecorded music videos; Prerecorded non-musical videotapes; Downloadable video recordings featuring music; Downloadable video recordings; Computer programmes for interactive television and for interactive games and/or quizzes; Computer application software featuring games and gaming. Computer software for processing digital music files; Computer software that permits games to be played; Entertainment software; Interactive entertainment software; Interactive entertainment software for use with computers; Interactive entertainment software for use with personal computers; Machine readable computer programs for use in the reproduction of music; Music software; Programs recorded on electronic circuits for amusement apparatus with liquid crystal screens.

Class 35: Advertisement and publicity services by television, radio, mail; Advertisement for others on the Internet; Advertisement via mobile phone networks; Advertisements (Placing of -); Advertisements (Preparing of -); Advertising; Advertising agencies; Advertising services; Advertising copywriting; Advertising and marketing; Advertising agency services; Advertising and publicity; Advertising for others; Advertising and marketing services; Advertising and advertisement services; Advertising and publicity services; Advertising and promotion services; Advertising and promotional services; Advertising material (Updating of -); Advertising matter (Production of -); Advertising services provided by television; Advertising and marketing services provided via communications channels; Advertising and marketing services provided by means of blogging; Advertising and marketing services provided by means of social media; Advertising and promotion services and related consulting; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Advertising, marketing and promotional consultancy, advisory and assistance services; Advertising in periodicals, brochures and newspapers; Advertising on the Internet for others; Advertising via the Internet; Advertising services provided over the internet; Advertising services provided via the internet; Advertising in the popular and professional press; Advertising, including on-line advertising on a computer network; Advertising of business web sites; Advertising, promotional and public relations services; Advertising particularly services for the promotion of goods; Advertising relating to pharmaceutical products and in-vivo imaging products; Advertising services by means of sandwich board; Advertising services by means of television screen based text; Advertising services for the promotion of e-commerce; Advertising services provided via a data base; Advertising services relating to books; Advertising services relating to data bases; Advertising services relating to the recruitment of personnel; Advertising services relating to pharmaceuticals for the treatment of diabetes; Advertising services relating to the commercialization of new products; Advertising services relating to pharmaceutical products; Advertising services to create corporate and brand identity; Advertising services to promote public awareness of medical conditions; Advertising the goods and services of online vendors via a searchable online guide; Advertising through all public communication means; Advertising via electronic media and specifically the internet; Advice in the field of business management and marketing; Affiliate marketing; Announcement services for advertising purposes; Arrangement of advertising; Arranging advertising contracts for others; Arranging advertising and promotional contracts for others; Arranging of competitions for advertising purposes; Arranging of presentations for advertising purposes; Arranging and conducting of advertising events; Arranging and conducting marketing promotional events for others; Arranging and conducting of marketing events; Arranging and conducting of promotional events; Arranging and placing of advertisements; Assistance to management in commercial enterprises in respect of advertising; Banner advertising; Bill-posting; Bill sticking; Brand creation services; Brand creation services (advertising and promotion); Brand evaluation services; Brand positioning; Brand positioning services; Brand strategy services; Brand testing; Business advertising services relating to franchising; Business assistance relating to business image; Business assistance relating to corporate identity; Business marketing services; Business promotion; Business promotion services; Business promotion services provided by telephone; Business promotion services provided by audio/visual means; Classified advertising; Classified advertising services; Collection of information relating to advertising; Compilation of advertisements for use as web pages; Compilation of advertisements for use on internet web pages; Compilation of advertisements for use as web pages on the Internet; Compilation of advertisements for use on the internet; Compilation of advertisements; Compilation, production and dissemination of advertising matter; Composing advertisements for use as web pages; Composing advertisements for use as webpages; Computerised business promotion; Copywriting; Copywriting for advertising and promotional purposes; Corporate identity services; Creating advertising material; Database marketing; Design of advertising brochures; Design of advertising flyers; Design of advertising materials; Design of marketing surveys; Developing promotional campaigns for businesses; Developing promotional campaigns for business; Development and implementation of marketing strategies for others; Development of marketing strategies and concepts; Development of promotional campaigns; Digital advertising services; Direct market advertising; Direct marketing; Direct marketing services; Distribution of advertising, marketing and promotional material; Displaying advertisements for others; Editing of publicity texts; Electronic billboard advertising; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Electronic publication of printed matter for advertising purposes; Estimations for marketing purposes; Event marketing; Exhibitions (Conducting -) for commercial purposes; Financial marketing; Graphic advertising services; Hire of advertising aids; Hire of advertising equipment; Hiring of advertising materials; Hiring of publicity materials; Information services relating to advertising; Internet marketing; Issuing and updating of advertising texts; Issuing of publicity leaflets; Layout services for advertising purposes; Loyalty, incentive and bonus program services; Management assistance for promoting business; Market campaigns; Marketing; Marketing agency services; Marketing information; Marketing services; Marketing by telephone; Marketing in the framework of software publishing; Marketing services in the field of dentistry; Marketing services provided by means of digital networks; Marketing the goods and services of others; Media buying services; Mediation of advertising; Negotiation of advertising contracts; Newspaper advertising; On-line advertising on computer networks; On-line advertising on a computer network; On-line advertising on computer communication networks; On-line advertising via a computer communications network; On-line promotion of computer networks and websites; Online advertisements; Online advertising services; Online advertising on a computer network; Online advertising via a computer communications network; Online advertising network matching services for connecting advertisers to websites; Online community management services; Organisation of prize draws for advertising purposes; Organisation of trade fairs for advertising purposes; Outdoor advertising; Pay per click advertising; Placing advertisements for others; Preparing and placing advertisements for others; Preparing and placing outdoor advertisements for others; Planning of marketing strategies; Planning services for advertising; Preparation and realization of media and advertising plans and concepts; Preparation of advertisements; Preparation of advertising campaigns; Preparation of advertising matter; Preparation of advertising material; Preparation of custom advertisements for others; Preparation of mailing lists for direct mail advertising services [other than selling]; Preparation of marketing plans; Preparation of publicity leaflets; Preparation of publicity columns; Preparation of publicity documents; Preparation of publicity publications; Preparation of publicity material; Preparation of trade publicity texts; Preparation of reports for marketing; Preparing advertisements for others; Preparing and placing of advertisements; Preparing audio-visual presentations for use in advertising; Preparing promotional and merchandising material for others; Presentation of companies on the Internet and other media; Presentation of companies and their goods and services on the Internet; Press advertising services; Prize draws (Organising of -) for advertising purposes; Prize draws (Organising of -) for promotional purposes; Producing promotional videotapes, video discs, and audio visual recordings; Product demonstrations and product display services; Product marketing; Production of sound recordings for marketing purposes; Production of video recordings for marketing purposes; Product sampling; Production and distribution of radio and television commercials; Production of advertising materials; Production of advertising matter; Production of advertising material; Production of advertising films; Production of advertising matter and commercials; Production of visual advertising matter; Production of video recordings for advertising purposes; Production of sound recordings for advertising purposes; Production of commercials; Production of television commercials; Production of radio commercials; Production of infomercials; Production of radio advertisements; Production of television and radio advertisements; Production of sound recordings for publicity purposes; Production of video recordings for publicity purposes; Promoting a series of films for others; Promoting the designs of others by means of providing online portfolios via a website; Promoting the artwork of others by means of providing online portfolios via a website; Promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with awards programs; Promoting the goods and services of others over the Internet; Promoting the goods and services of others; Promoting the goods and services of others via a global computer network; Promoting the goods and services of others via computer and communication networks; Promoting the goods and services of others by means of a preferred customer program; Promoting the goods and services of others by means of a loyalty rewards card scheme; Promoting the goods and services of others through advertisements on Internet websites; Promoting the goods and services of others through discount card programs; Promoting the music of others by means of providing online portfolios via a website; Promoting the sale of goods and services of others through promotional events; Promoting the sale of the services [on behalf of others] by arranging advertisements; Promotion, advertising and marketing of on-line websites; Promotion [advertising] of business; Promotion of insurance services, on behalf of third parties; Promotion of special events; Promotion services; Promotional services; Promotional advertising services; Promotional and advertising services; Promotional marketing services using audiovisual media; Promotional advertising carried out via the telephone; Promotional advertising for exploration projects; Promotional advertising relating to philosophical instruction; Promotional advertising relating to philosophical training; Promotional marketing; Promotional services provided by telephone; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Providing a searchable online advertising guide featuring the goods and services of online vendors; Providing advertising services; Providing advice in the field of business management and marketing; Providing assistance in the field of product commercialization; Providing assistance in the field of product commercialization within the framework of a franchise contract; Providing business marketing information; Providing information in the field of marketing; Providing marketing information via websites; Providing searchable online advertising guides; Provision of advertising space, time and media; Provision of advertising information; Provision of information relating to advertising; Provision of information relating to marketing; Provision of marketing information; Provision of marketing reports; Provision of models for advertising; Provision of models for promotional purposes; Public relations; Public relations agency; Public relations services; Publication of advertising matter; Publication of advertising texts; Publication of advertising literature; Publication of printed matter for advertising purposes; Publication of printed matter for advertising purposes in electronic form; Publication of publicity material; Publication of publicity materials; Publication of publicity materials on-line; Publication of publicity materials and texts; Publication of publicity texts; Publicity; Publicity agencies; Publicity agency services; Publicity agents; Publicity and advertising; Publicity services; Publicity bureau services; Rental (Publicity material -); Publicity material rental; Publicity column preparation; Publicity columns preparation; Publicity publication services; Publicity material (Rental of -); Publicity leaflets (Issuing of -); Rental of publicity matter; Rental of publicity material; Publicity and promotional services; Publicity texts (Writing of -); Publicity texts (Publication of -); Publicity material (Preparation of -); Publicity and sales promotion services; Radio advertising; Radio advertising and commercials; Radio and television advertising; Referral marketing; Rental of all publicity and marketing presentation materials; Rental of sales stands; Rental of signs for advertising purposes; Reproduction of advertising material; Response advertising; Sales promotion; Sales promotion for others; Sales promotion for others through trading stamp schemes; Sales promotion for third parties; Sales promotion services; Sales promotion services for third parties; Sales promotion services, namely the bringing together of a variety of providers of telecommunication enabling others to conveniently view and purchase these services; Sales promotion using audiovisual media; Sales promotions at point of purchase or sale, for others; Scriptwriting for advertising purposes; Search engine marketing services; Search engine optimisation; Search engine optimisation for sales promotion; Search engine optimisation services; Search engine optimization; Search engine optimization for sales promotion; Services of advertising agencies; Services with regard to product presentation to the public; Sponsorship search; Sponsorship search consultancy services; Targeted marketing; Telemarketing services; Telephone marketing services [not selling]; Television advertising; Texts (Publication of publicity -); Texts (Writing of publicity -); Writing of publicity texts; Trade marketing [other than selling]; Trade promotional services; Trade show and commercial exhibition services; Trade show and exhibition services; Updating advertising material; Updating of advertising material; Updating of advertising information on a computer data base; Video recordings for marketing purposes (Production of -); Video recordings for advertising purposes (Production of -); Video recordings for publicity purposes (Production of -); Web indexing for commercial or advertising purposes; Web site traffic optimization; Web site traffic optimisation; Advisory services relating to public relations; Assistance to management in commercial enterprises in respect of public relations; Consultancy regarding public relations communications strategy; Consultancy relating to public relations; Public relations consultancy; Arranging of displays for business purposes; Arranging of displays for commercial purposes; Communication media (Presentation of goods on -), for retail purposes; Demonstration of goods for promotional purposes; Demonstration of goods for advertising purposes; Preparation and presentation of audio visual displays for advertising purposes; Presentation of financial products on communication media, for retail purposes; Presentation of goods on communications media, for retail purposes; Presentation of goods and services; Presentation of goods on communication media, for retail purposes; Administration of consumer loyalty programs; Administration of frequent flyer programs; Administration of loyalty and incentive schemes; Administrative loyalty card services; Organisation and management of business incentive and loyalty schemes; Sales promotion through customer loyalty programs; Promoting the sale of goods and services of others by awarding purchase points for credit card use; Organisation, operation and supervision of customer loyalty schemes; Customer club services, for commercial, promotional and/or advertising purposes; Customer loyalty services for commercial, promotional and/or advertising purposes; Customer relationship management; Loyalty scheme services; Administration of loyalty programs involving discounts or incentives; Administration of loyalty rewards programs featuring trading stamps; Administration of loyalty rewards programs; Administration of sales promotion incentive programs; Administration of sales and promotional incentive schemes; Providing and rental of advertising space on the internet; Provision of advertising space; Provision of advertising space by electronic means and global information networks; Provision of advertising space on a global computer network; Provision of advertising space on electronic media; Provision of space on websites for advertising goods and services; Provision of space on web-sites for advertising goods and services; Provision of computerised advertising services; Rental of advertisement billboards; Advertisement billboards (Rental of -); Advertising space (Rental of -); Advertising space (Rental of -) on the internet; Renting of advertising spaces; Rental of advertising space; Rental of advertising space on-line; Rental of advertising space on the Internet for employment advertising; Rental of advertising space on the internet; Rental of advertising space on web sites; Rental of advertisement space and advertising material; Rental of advertisement space; Rental of advertising time on communication media; Rental of billboards; Rental of digital billboards; Rental of billboards [advertising boards]; Advertising material (Dissemination of -); Dissemination of advertising material; Dissemination of advertising materials; Dissemination of advertising and promotional materials; Dissemination of advertising, marketing and publicity materials; Distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; Dissemination of advertising material [leaflets, brochure and printed matter]; Dissemination of advertising material [leaflets, brochures and printed matter]; Direct mail advertising; Direct mail advertising services; Direct mail advertising services provided by lettershops; Direct mail advertising to attract new customers and to maintain the existing customer base; Dissemination of advertising for others; Dissemination of advertising for others via the Internet; Dissemination of advertisements; Dissemination of advertisements and of advertising material [flyers, brochures, leaflets and samples]; Dissemination of advertisements via the Internet; Dissemination of advertising for others via an on-line communications network on the internet; Dissemination of advertising via online communications networks; Advertising by mail order; Advertising flyer distribution; Advertising flyer distribution for others; Arranging the distribution of advertising samples in response to telephone enquiries; Dissemination of advertising matter; Dissemination of advertising matter online; Dissemination of advertising matter by mail; Dissemination services of advertisement matter; Distribution of advertising matter; Distribution of advertising materials; Distribution of advertising material; Distribution of advertising brochures; Distribution of advertising leaflets; Distribution of advertising announcements; Distribution of advertising samples; Distribution of printed advertising matter; Distribution of products for advertising purposes; Distribution of advertising material by post; Distribution of prospectuses for advertising purposes; Distribution of samples for advertising purposes; Distribution of advertising mail and of advertising supplements attached to regular editions; Distribution of prospectuses and samples for advertising purposes; Distribution of flyers, brochures, printed matter and samples for advertising purposes; Distribution of promotional leaflets; Distribution of promotional material; Distribution of promotional matter; Distribution of printed promotional material by post; Distribution of advertisements and commercial announcements; Distribution of prospectuses and samples; Distribution of publicity texts; Distribution of publicity materials, namely, flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales [whether crossborder or not]; Distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; Distribution of publicity leaflets; Distribution of samples for publicity purposes; Distribution of samples; Handbill distribution; Mail-order advertising; Promoting the goods and services of others by distributing coupons; Promoting the goods and services of others through the distribution of discount cards; Promoting the sale of goods and services of others through the distribution of printed material and promotional contests; Publicity brochure distribution; Sample distribution; Samples (Distribution of -); Advice relating to business management; Advice relating to business organisation; Advice relating to the organisation and management of business; Advising commercial enterprises in the conduct of their business; Advising industrial enterprises in the conduct of their business; Advisory services for business management; Advisory services relating to business organization; Advisory services relating to business management; Advisory services relating to business management and business operations; Advisory services relating to business organisation; Advisory services relating to business organisation and management; Advisory services relating to the corporate structure of businesses; Advisory services relating to the corporate structure of companies; Advisory services relating to business administration; Assistance, advisory services and consultancy with regard to business analysis; Assistance, advisory services and consultancy with regard to business planning; Assistance, advisory services and consultancy with regard to business organization; Assistance, advisory services and consultancy with regard to business management; Assistance and advice regarding business management; Assistance and advice regarding business organization; Assistance and advice regarding business organization and management; Assistance and advice regarding business organisation and management; Assistance and consultancy relating to business management and organisation; Business acquisitions (Advice relating to -); Business administration consultancy; Business consultancy relating to the administration of information technology; Business advice, inquiries or information; Business advisory services relating to product development; Business advisory services relating to company performance; Business management advisory services relating to industrial enterprises; Business management advisory services relating to commercial enterprises; Business appraisal consultancy; Business consultancy; Business consultancy (Professional -); Business consultancy services; Business management consultancy; Business organisation consultancy; Business organization consultancy; Business consultancy to individuals; Business consultancy to firms; Business management consultancy services; Business management organisation consultancy; Business consultation; Business consultation services; Business merger consultation; Business management consultation; Business organizational consultation; Business consulting; Business consulting services; Business consulting for enterprises; Business management consulting; Business organisation consulting; Business organization consulting; Business research consulting; Business management consulting services; Business planning and business continuity consulting; Business organization and management consulting; Business organisation and management consulting; Business organisation and management consulting services; Business management consulting services in the field of information technology; Business management advice; Business management advice and assistance; Business management advisory services; Business management consultancy and advisory services; Business efficiency advice; Business management and organisation consultancy services; Business management and organisation consultancy; Business management and organization consultancy; Business management and organization consultancy services; Business management consultancy services provided via the Internet; Business management consultancy via the Internet; Business management consultancy, also via the Internet; Business management consultancy in the field of executive and leadership development; Business mergers (Advice relating to -); Business organisation advice; Business organisation and management consultancy; Business organization advice; Business organization and operation consultancy; Business planning consultancy; Consultancy and advisory services in the field of business strategy; Commercial consultancy; Consultancy relating to business management; Consultancy and advisory services for business management; Consultancy and advisory services relating to business management; Consultancy (Professional business -); Consultancy regarding business organisation and business economics; Consultancy regarding the organization or managing of a trade company; Consultancy relating to business acquisition; Consultancy relating to business document management; Consultancy relating to business efficiency; Consultancy relating to business management and organisation; Consultancy relating to business analysis; Consultancy relating to business organisation; Consultancy relating to the establishment and running of businesses; Corporate image development consultation; Corporate management consultancy; Corporate management consultancy services; Management advice; Management advisory services related to franchising; Market reporting consultancy; Market reporting services; Management consulting; Management (Advisory services for business -); Professional business consultation relating to the operation of businesses; Professional business consultation relating to the setting up of businesses; Professional business consultations; Providing assistance in the field of business organisation; Strategic business consultancy; Analysis of market research statistics; Analysis of market research data; Analysis of market research data and statistics; Analysis of markets; Computerised market research; Computerized market research services; Conducting business and market research surveys; Conducting market surveys; Conducting marketing studies; Conducting of market research; Conducting of market studies involving opinion polling; Collection of information relating to market analysis; Collection of information relating to market research; Collection of information relating to market studies; Collection of market research information; Business and market research; Corporate image studies; Interpretation of market research data; Interviewing for qualitative market research; Interviewing for market research purposes; Market analysis; Market analysis and research services; Market analysis and research; Market analysis reports; Market analysis services; Market analysis studies; Marketing analysis; Market survey analysis; Marketing analysis services; Market research and analysis; Market surveys; Surveys (Market -); Market assessment services; Market assessment consultancy; Market research; Research (Market -); Market research services; Market research consultancy; Market research data collection services; Market research data retrieval services; Market research and analysis services; Market research by means of a computer database; Market research by means of a computer data base; Market research for advertising; Market research services relating to broadcast media; Market research services regarding customer loyalty; Market research services regarding Internet usage habits; Marketing forecasting; Public opinion polling; Public opinion polling services; Public opinion polls (Operating of -); Public opinion polls (Conducting of -); Public opinion surveys; Preparation of market analysis reports; Preparation of marketing surveys; Marketing research and analysis; Market surveys conducted by telephone; Research services relating to advertising; Research services relating to advertising and marketing; Statistical evaluations of marketing data; Advice relating to marketing management; Business advice relating to marketing management consultations; Advisory services relating to marketing; Advertising and marketing consultancy; Advisory services relating to advertising; Business consultation relating to advertising; Consultancy regarding advertising communications strategy; Consultancy regarding advertising communication strategies; Consultancy relating to advertising; Consultancy relating to advertising and promotion services; Business advice relating to marketing; Business advice relating to strategic marketing; Business advice relating to advertising; Advisory services relating to corporate identity; Advisory services relating to sales promotion; Advisory services relating to promotional activities; Advisory services relating to publicity for franchisees; Analysis of marketing trends; Advice on the analysis of consumer buying habits and needs provided with the help of sensory, quality and quantity-related data; Advertising consultation; Consulting services relating to marketing; Consulting services relating to publicity; Consulting services in the field of Internet marketing; Consultancy relating to business advertising; Consultancy relating to marketing; Consultations relating to business promotion; Direct marketing consulting; Market segmentation consultation; Marketing advice; Marketing management advice; Marketing (Business advice relating to -); Marketing advisory services; Marketing assistance; Marketing consultancy; Marketing consultation services; Marketing consulting; Organisation of promotions using audiovisual media; Press advertising consultancy; Professional consultancy relating to marketing; Promotion of goods and services through sponsorship; Providing advice relating to the analysis of consumer buying habits; Providing assistance in the field of business promotion; Providing marketing consulting in the field of social media; Provision of advice relating to marketing; Provision of marketing advisory services for manufacturers; Publicity (Advisory services relating to -); Provision of information and advisory services relating to e-commerce; Acquisition of business information relating to company status; Acquisition of business information relating to company activities; Acquisition of commercial information; Business information (Compilation of -); Compilation of business information; Compilation of business statistics and commercial information; Business records management; Collecting business information; Collecting business statistics; Collecting information for business; Collection of commercial information; Collection of statistics for business; Commercial information (Compilation of -); Compilation of business data; Compilation of business directories; Compilation of business directories for publishing on the Internet; Directories (Compilation of business -); Compilation of business statistics; Compilation of online business directories; Compilation of commercial registers; Compilation of company information; Compilation of direct mailing lists; Compilation of lists of prospective customers; Compilation of mailing lists; Compilation of registers relating to importers; Compilation of registers relating to exporters; Computerised compilation of customer indexes; Computerised compilation of order lists; Consultancy relating to the preparation of business statistics; Drawing up of business statistical information; Financial records management; Preparation of business statistics; Preparation of business statistical data; Preparation of statistics [business]; Statistics (Preparation of business -).

Class 41: Audio and video production, and photography; Audio entertainment services; Entertainment services for sharing audio and video recordings; Audio, video and multimedia production, and photography; Education and instruction services; Entertainment, education and instruction services; Educational and training services; Education and training services; Entertainment; Entertainment information; Entertainment services; Entertainment provided via the internet; Audio and video editing services; Audio and video recording services; Audio production; Audio production services; Audio, film, video and television recording services; Adult education services relating to management; Adult education services relating to medicine; Adult training; Advice relating to medical training; Conducting distance learning instruction at the secondary level; Conducting distance learning instruction at the primary level; Conducting distance learning instruction at the college level; Conducting distance learning instruction at the graduate level; Conducting distance learning instruction at the university level; Conducting educational support programmes for healthcare professionals; Conducting educational support programmes for patients; Conducting educational workshops in the field of business; Conducting instructional courses; Correspondence courses; Courses (Training -) relating to medicine; Courses (Training -) relating to research and development; Education and training services in the field of occupational health and safety; Education in the field of data processing; Education in the field of computing science.

2. European Union trade mark application No 17 351 214 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 351 214 ‘HLOOP’ (word mark) namely against all the goods and services in Classes 9, 35, 38, 41 and 42. The opposition is based on European Union trade mark registration No 15 764 681 ‘Loop’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In accordance with Article 47(1) EUTMR in the examination of the opposition, the Office shall invite the parties to file observations within a period set by the Office. Such deadline in the present case expired on 26/10/2018. As a consequence, the additional observations filed by the applicant on 07/01/2019, more than two months passed such deadline, are not taken into consideration in the present examination.

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 goods and services

The services on which the opposition is based, after a limitation, are the following:

Class 35: Arranging and conducting trade shows; Arranging and conducting of fairs and exhibitions for business and advertising purposes; Advertising and promotion services; Conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; Arranging and conducting trade shows; the foregoing services do not refer to the realm of telecommunication and there is no correlation with an incentive, customer retention and/or bonus program being used as customer retention measures.

Class 41: Providing information in the field of entertainment by means of a global computer network; Educational services; Entertainment services; Arranging and conducting of workshops and seminars; Arranging, conducting and organisation of workshops; Arranging, conducting and organisation of conferences; Arranging and conducting of conferences, congresses and symposiums; Arranging, conducting and organisation of concerts; Providing multi-media entertainment via a website; Providing entertainment information via a website; Providing video entertainment via a website; Providing information in the field of music; Providing information, commentary and articles in the field of music via computer networks; Providing online electronic publications in the field of music, not downloadable; Providing information in the field of entertainment by means of a global computer network; Distance learning courses; Distance learning services provided online; Production of live entertainment events; Presentation of live entertainment events; the foregoing services do not refer to the realm of telecommunication and there is no correlation with an incentive, customer retention and/or bonus program being used as customer retention measures.

The contested goods and services belong to Classes 9, 35, 38, 41 and 42. The full list of the contested goods and services (which is not reproduced here due to its length) can be found at:

https://euipo.europa.eu/eSearch/#details/trademarks/017351214.

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.

The applicant claims that there is a different targeted public and distribution channels that allegedly distinguish the conflicting goods and services. In particular, the applicant claims that the opponent targets professional musicians whereas the applicant aims its goods and services at employees and employers in the pharmaceutical industry. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services which is not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

Contested goods in Class 9

In light of the comparison of the contested goods with the opponent’s services it is important to note that by their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares or merchandise. Their sale usually entails the transfer in title of something physical. Services, however, consist of the provision of intangible activities.

However, goods or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). When complementarity between goods/services has been found in combination with other factors, such as ‘usual origin’ (producer/provider) and/or ‘distribution channel’ (points of sale), similarity may be found.

The Court has held in case T-388/00, ELS, of 23/10/2002, (EU:T:2002:260) that teaching materials in Classes 9 and 16 (such as printed matter, pre-recorded data carriers and audio/video cassettes) are essential and thus complementary to educational courses in Class 41 because generally the materials are issued by the same undertaking, and share the same public and distribution channels. Therefore, those goods were found similar to the services in question.

By analogy, in the present case, the Opposition Division concludes that for the same reasons at least a low degree of similarity is to be found between on the one hand educational services in Class 41 of the opponent and some of the contested goods in Class 9 being or belonging to the categories of recorded content, media content or software which may contain educational material or are intended for educational purposes, since teaching materials can come in any of these forms, namely:

Recorded content; Computer databases; Databases; Databases (electronic); Electronic databases; Computer digital maps; Computer programmes; Computer programs; Computer software programs; Computer software [programmes]; Computer software; Data banks; Data recorded electronically; Directories [electric or electronic]; Media content; Recorded data files; Recorded data [magnetic]; Electronic databases recorded on computer media; Software; Software for computers; Timetables (Electronic -); Audio books; Audio recordings; Audio visual recordings; Digital books downloadable from the Internet; Downloadable digital photos; Downloadable e-books; Downloadable electronic books; Downloadable educational course materials; Downloadable electronic publications; Electronic publications, downloadable; Downloadable electronic newspapers; Downloadable electronic brochures; Downloadable electronic reports; Downloadable electronic newsletters; Downloadable electronic maps; Downloadable instruction manuals in electronic form; Downloadable electronic publications in the nature of magazines; Downloadable publications; Publications (Electronic -), downloadable; Publications in electronic format [downloadable]; E-books; Electronic publications; Publications in electronic format; Electronic publications recorded on computer media; Instruction manuals in electronic format; Recorded film; Recorded films; Recorded video tapes; Talking books; Training manuals in electronic format; Training manuals in the form of a computer program; Video films; Video recordings; Weekly publications downloaded in electronic form from the internet; Computer programmes [programs], recorded; Computer programmes, recorded; Computer programmes stored in digital form; Computer programs [downloadable software]; Children's educational software; Computer programs, recorded; Computer software applications, downloadable; Computer software applications; Computer software concerned with children's education; Computer software downloadable from global computer information networks; Computer software downloaded from the internet; Computer software, recorded; Computer software supplied from the Internet; Computer software supplied on the Internet; Downloadable software in the nature of a mobile application; Computer software for mobile phones; Computer software for use on handheld mobile digital electronic devices and other consumer electronics; Computer software packages; Computer software platforms; Computer software platforms, recorded or downloadable; Downloadable application software for smart phones; Downloadable applications for use with mobile devices; Downloadable applications for mobile devices; Downloadable smart phone applications (software); Downloadable mobile applications; Downloadable computer software; Downloadable computer software applications; Downloadable software; Education software; Educational software; Master of Education software; Mobile apps; Mobile app's; Mobile application software; Packaged software; Pre-recorded software; Programs (Computer -) [downloadable software]; Programs for computers; Recorded computer programmes; Recorded computer software; Recorded computer programs; Smartphone software applications, downloadable; Software and applications for mobile devices; Software applications; Software applications for use with mobile devices; Software (Computer -), recorded; Student software; Training software; Virtual classroom software; Data storage devices.

As regards the contested goods that concern a range of recorded, media content or software which may contain entertainment or are intended for entertainment purposes, the Opposition Division concludes that the following contested goods are at least similar to a low degree to the opponent’s entertainment services because, if not also complementary, they may coincide in producer and target the same public.

Animated films; Records [sound recordings]; Series of musical sound recordings; Sound recordings; Tape recordings of music; Downloadable digital music; Digital music downloadable from the Internet; Digital music downloadable provided from the internet; Digital music downloadable provided from MP3 internet websites; Digital music downloadable provided from MP3 internet web sites; Downloadable digital music provided from MP3 Internet web sites; Digital music [downloadable] provided from mp3 web sites on the internet; Digital music downloadable provided from a computer database or the internet; Downloadable films; Downloadable image files; Downloadable movies; Downloadable music files; Downloadable musical sound recordings; Downloadable podcasts; Downloadable video files; Do Motion picture films; Motion pictures; Prerecorded motion picture videos; Pre-recorded motion picture films; Multi-media recordings; Music recordings; Musical recordings; Musical sound recordings; Musical video recordings; Podcasts; Pre-recorded audio tapes; Pre-recorded films; Prerecorded digital audio tapes; Prerecorded music audio tapes; Prerecorded music videos; Prerecorded non-musical videotapes; Downloadable video recordings featuring music; Downloadable video recordings; Computer programmes for interactive television and for interactive games and/or quizzes; Computer application software featuring games and gaming. Computer software for processing digital music files; Computer software that permits games to be played; Entertainment software; Interactive entertainment software; Interactive entertainment software for use with computers; Interactive entertainment software for use with personal computers; Machine readable computer programs for use in the reproduction of music; Music software; Programs recorded on electronic circuits for amusement apparatus with liquid crystal screens.

The remaining contested goods, however, do not show such connections with any of the opponent’s services in class 41 and are even further apart from the opponent’s services in class 35, which belong to some specific activities in the field of advertising, marketing and promotion. These concern principally exposed film or other specific software for a different use and purpose, which leads to the conclusion that they are not complementary to the opponent’s services, nor that they target the same audience. Therefore, the following goods are considered dissimilar to all the opponent’s services:

Downloadable electronic greeting cards for sending by regular mail; Downloadable printable planners and organizers; Exposed film; Exposed sensitized films; Films, exposed; Sensitised films (Exposed -); Sensitized films, exposed; Photosensitive media [films, exposed]; Printing fonts that can be downloaded provided by means of electronic transmission; Firmware for computer peripherals; Adaptive software; Application software; Application software for televisions; Computer application software; Application software for smart phones; Application software for smart TV; Application software for cloud computing services; Application software for mobile phones; Application software for wireless devices; Computer application software for mobile phones; Computer application software for mobile telephones; Application software for social networking services via internet; Computer application software for use with wearable computer devices; Computer application software for use in implementing the Internet of Things [IoT]; Augmented reality software; Augmented reality software for use in mobile devices; Assistive software; Augmented reality software for creating maps; Augmented reality software for use in mobile devices for integrating electronic data with real world environments; Authentication software; Bioinformatics software; BIOS software; Business management software; Biometric identification systems; Business technology software; Chemical engineering software; Civil engineering software; Cartridges [software] for use with computers; Cloud computing software; Cloud network monitoring software; CMS software [Content management system]; Communication software; Communication software for connecting global computer networks; Communication software for connecting computer network users; Communications software; Community software; Compiler software; Compilers; Computer-aided design (CAD) software; Computer-aided manufacturing software; Computer antivirus software; Computer application software for TV; Computer communication software to allow customers to access bank account information and transact bank business; Computer e-commerce software; Computer firewall software; Computer firmware; Computer graphics software; Computer groupware; Computer interface apparatus; Computer interface software; Computer interfaces; Computer operating systems; Computer programmes for data processing; Computer programmes for document management; Computer programmes for image processing; Computer software for accessing computer networks; Computer programmes for use in telecommunications; Computer programmes relating to local area networks; Computer programmes relating to financial matters; Computer programs for accessing and using the internet; Computer programs and software for image processing used for mobile phones; Computer programs for accessing, browsing and searching online databases; Computer programs for document management; Computer programs for connecting remotely to computers or computer networks; Computer programs for enabling access or entrance control; Computer programs for the enabling of access or entrance control; Computer programs for network management; Computer programs for project management; Computer programs for processing digital music files; Computer programs for searching remotely for content on computers and computer networks; Computer programs for searching the contents of computers and computer networks by remote control; Computer programs for user interface design; Computer programs for using the internet and the worldwide web; Computer programs used for electronic cash register systems; Computer search engine software; Computer shareware; Computer software for controlling and managing access server applications; Computer software designed to estimate costs; Computer software designed to estimate resource requirements; Computer software development tools; Computer software for accessing information directories that may be downloaded from the global computer network; Computer software for accessing databases; Computer software for accessing, browsing and searching online databases; Computer software for advertising; Computer software for analysing market information; Computer software for application and database integration; Computer software for audibly controlling a computer and the operation thereof; Computer software for authorising access to data bases; Computer software for biometric systems for the identification and authentication of persons; Computer software for business purposes; Computer software for cellular phones; Computer software for communication between computers over a local network; Computer software for communicating purposes between microcomputers; Computer software for communicating with users of hand-held computers; Computer software for computer aided software engineering; Computer software for controlling the operation of audio and video devices; Computer software for converting document images into electronic formats; Computer software for creating searchable databases of information and data; Computer software for creating dynamic websites; Computer software for creating and editing music and sounds; Computer software for database management; Computer software for document management; Computer software for electronic bulletin boards; Computer software for encryption; Computer software for generation of typefaces and fonts; Computer software for inter-network accounting in the telecommunications field; Computer software for interpreting fingerprints or palm prints; Computer software for organizing and viewing digital images and photographs; Computer software for producing financial models; Computer software for processing market information; Computer software for processing digital images; Computer software for the processing of positioning data; Computer software for scanning images and documents; Computer software for the monitoring of computer systems; Computer software for the collection of positioning data; Computer software for the compilation of positioning data; Computer software for the transmission of positioning data; Computer software for the dissemination of positioning data; Computer software for the remote control of office machines and equipment; Computer software for time control; Computer software for use in computer access control; Computer software for use in computer network access control; Computer software for use in programming facsimile machines; Computer software for use in medical decision support systems; Computer software for use in migrating between different computer network operating systems; Computer software for use in creating and designing websites; Computer software for use as an application programming interface (API); Computer software for use in providing multiple user access to a global computer information network; Computer software for wireless network communications; Computer software for wireless content delivery; Computer software in the field of electronic publishing; Computer software programs for database management; Computer software programs for spreadsheet management; Computer software relating to financial history; Computer software relating to the medical field; Computer software relating to the handling of financial transactions; Computer software that assists computers in deploying parallel applications and performing parallel computations; Computer software to automate data warehousing; Computer software to enable the searching of data; Computer software to enable searching of data; Computer software to enable the transmission of photographs to mobile telephones; Computer software to enable teleconferencing, videoconferencing and videophone services; Computer software to enable retrieval of data; Computer software to enable the provision of information via communications networks; Computer software to enable the provision of electronic media via communications networks; Computer software to enable the provision of information via the Internet; Computer software to enable browsing on global computer networks; Computer software to enable the provision of electronic media via the Internet; Computer software to enable searching and retrieval of data; Computer software to enhance the audio-visual capabilities of multimedia applications; Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Computer software to maintain and operate computer system; Computer telephony software; Computer utility programs [program performs computer maintenance work]; Computer utility programs for computer maintenance; Computer utility programs for data compression; Computer utility programs for file management; Downloadable computer utility programs; Computer whiteboard software; Control segment integration software; Data and image processing software for making three dimensional models; Data communications software; Controlling software for computer printers; Data compression software; Data processing programs; Decoder software; Desktop publishing software; Development kits; Data processing software; Data processing software for word processing; Data processing software for graphic representations; Data storage programs; Database management software; Devkits; Digital telephone platforms and software; Downloadable mobile applications for the management of data; Downloadable mobile applications for the management of information; Downloadable mobile applications for the transmission of information; Downloadable mobile applications for the transmission of data; Downloadable software applications for use with three dimensional printers; Downloadable cloud computing software; Downloadable computer programs; Downloadable computer security software; Downloadable computer utility software; Downloadable computer software for remote monitoring and analysis; Downloadable computer software for the transmission of data; Downloadable computer software for the management of data; Downloadable email software; Downloadable instant messaging software; Downloadable mobile applications for use with wearable computer devices;; Editing software; E-commerce software; Electrical engineering software; Electromechanical software; Electronic blackboards; Electronic device software drivers that allow computer hardware and electronic devices to communicate with each other; Electronic mail and messaging software; Encoded programs; Encryption software; Facial analysis software; Facial recognition software; File sharing software; File synchronization software; Financial management software; Firmware; Freeware; Gesture recognition software; Graphical user interface software; Graphics software; Graphics accelerators; Image recognition software; Industrial software; Industrial controls incorporating software; Instant messaging software; Interactive computer software; Interactive computer software enabling exchange of information; Interactive computer software that provides navigational and travel information; Interactive multimedia computer programs; Interactive video software; Interfaces for computers; Interface software; Internet messaging software; Internet access software; LAN [local area network] operating software; Maintenance software; Media software; Middleware; Middleware for management of software functions on electronic devices; Mobile device management software; Mobile software; Monitors [computer programs]; Multimedia software; Network management computer software; Network management software; Network operating system programs; Network operating systems programs; Noise cancellation software; On-premise management software; Operating system programs for smart TV; Operating system programs for smart television; Operating system programs for smartphones; Optical data carriers bearing recorded software; Personal computer application software for document control systems; Personal computer application software for managing document control systems; Predictive maintenance software; Privacy software; Privacy protection software; Process controlling software; Science software; Security software; Sensory software; Simulation software; Simulation software for use in digital computers; Software development kit [SDK]; Software development tools; Software drivers; Software for arranging online transactions; Software for card readers; Software for commerce over a global communications network; Software for conducting general meetings; Software for debt recovery; Software for designing online advertising on websites; Software for diagnostics and troubleshooting; Software for embedding online advertising on websites; Software for ensuring the security of electronic mail; Software for interactive television; Software for mobile phones; Software for mobile device management; Software for network and device security; Software for online messaging; Software for operating an online shop; Software for processing digital images; Software for processing images, graphics and text; Software for optical character recognition; Software for remote diagnostics; Software for renting advertising space on websites; Software for satellite navigation systems; Software for searching and retrieving information across a computer network; Software for tablet computers; Software for televisions; Software for the analysis of business data; Software for the control of stage lighting apparatus and instruments; Software for the processing of business transactions; Software platforms to allow users to collect money; Software related to handheld digital electronic devices; Speech analytics software; Speech recognition software; Spelling verifiers; Table representation software; Tax preparation software; Telecommunications software; Unified communications software; UPI [universal peripheral interface] software; USB operating software; USB [universal serial bus] operating software; Utility programs for performing computer system diagnostics; Utility software; Video accelerators; Virtual reality software; Virtual reality software for medical teaching; Voice recognition software; VPN [virtual private network] operating software; WAN [wide area network] operating software; Website development software; Workflow applications; Workflow software; Workout logging software; Communications processing computer software; Computer operating programs; Computer operating programmes; Computer operating programs, recorded; Computer operating system programmes; Operating computer software for main frame computers; Computer operating software; Computer operating system software; Recorded computer operating programs; Computer software adapted for use in the operation of computers; Embedded operating software; Integrated software packages; Network access server operating software; Operating software; Operating system software; Operating system programs; Communications equipment; Electronic communications instruments; Electronic diaries; Electronic notebooks; Electronic organizers; Electronic personal organizers; Electronic personal organisers; Humanoid robots with artificial intelligence; Encoders; Speech processors; Speech recognisers; Speech recognition apparatus; Voice processors.

Contested services in class 35

Some of the contested services in this class belong to the fields of advertising, marketing, promotion and business management and consequently belong to the same or similar fields of activity of the opponent in this class.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share.

When comparing business management with advertising it should be noted that advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is ‘to reinforce the [business] position in the market’ and the purpose of business management services is to help a business in ‘acquiring, developing and expanding market share’. There is not a clear-cut difference between ‘reinforcing a business position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice about how to efficiently run a business may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a part of their services, and therefore the relevant public may believe that these two services have the same professional origin. Consequently, considering the above, these services are similar to a low degree (22/11/2011, R 2163/2010-1, INNOGAME / INNOGAMES, § 13-17). This clear link between the two services also follows from the definitions given above of marketing research (an advertising service) and business research (a business management service).

The following services are – at least – provided by the same type of business related entities, target the same end user and will be provided by way of the same channels of distribution. Based on this conclusion, they are all to be found at least similar to a low degree to, if not identical because they are included in or overlap with, the opponent’s broad categories of advertising and promotion services:

Advertisement and publicity services by television, radio, mail; Advertisement for others on the Internet; Advertisement via mobile phone networks; Advertisements (Placing of -); Advertisements (Preparing of -); Advertising; Advertising agencies; Advertising services; Advertising copywriting; Advertising and marketing; Advertising agency services; Advertising and publicity; Advertising for others; Advertising and marketing services; Advertising and advertisement services; Advertising and publicity services; Advertising and promotion services; Advertising and promotional services; Advertising material (Updating of -); Advertising matter (Production of -); Advertising services provided by television; Advertising and marketing services provided via communications channels; Advertising and marketing services provided by means of blogging; Advertising and marketing services provided by means of social media; Advertising and promotion services and related consulting; Advertising by transmission of on-line publicity for third parties through electronic communications networks; Advertising, marketing and promotional consultancy, advisory and assistance services; Advertising in periodicals, brochures and newspapers; Advertising on the Internet for others; Advertising via the Internet; Advertising services provided over the internet; Advertising services provided via the internet; Advertising in the popular and professional press; Advertising, including on-line advertising on a computer network; Advertising of business web sites; Advertising, promotional and public relations services; Advertising particularly services for the promotion of goods; Advertising relating to pharmaceutical products and in-vivo imaging products; Advertising services by means of sandwich board; Advertising services by means of television screen based text; Advertising services for the promotion of e-commerce; Advertising services provided via a data base; Advertising services relating to books; Advertising services relating to data bases; Advertising services relating to the recruitment of personnel; Advertising services relating to pharmaceuticals for the treatment of diabetes; Advertising services relating to the commercialization of new products; Advertising services relating to pharmaceutical products; Advertising services to create corporate and brand identity; Advertising services to promote public awareness of medical conditions; Advertising the goods and services of online vendors via a searchable online guide; Advertising through all public communication means; Advertising via electronic media and specifically the internet; Advice in the field of business management and marketing; Affiliate marketing; Announcement services for advertising purposes; Arrangement of advertising; Arranging advertising contracts for others; Arranging advertising and promotional contracts for others; Arranging of competitions for advertising purposes; Arranging of presentations for advertising purposes; Arranging and conducting of advertising events; Arranging and conducting marketing promotional events for others; Arranging and conducting of marketing events; Arranging and conducting of promotional events; Arranging and placing of advertisements; Assistance to management in commercial enterprises in respect of advertising; Banner advertising; Bill-posting; Bill sticking; Brand creation services; Brand creation services (advertising and promotion); Brand evaluation services; Brand positioning; Brand positioning services; Brand strategy services; Brand testing; Business advertising services relating to franchising; Business assistance relating to business image; Business assistance relating to corporate identity; Business marketing services; Business promotion; Business promotion services; Business promotion services provided by telephone; Business promotion services provided by audio/visual means; Classified advertising; Classified advertising services; Collection of information relating to advertising; Compilation of advertisements for use as web pages; Compilation of advertisements for use on internet web pages; Compilation of advertisements for use as web pages on the Internet; Compilation of advertisements for use on the internet; Compilation of advertisements; Compilation, production and dissemination of advertising matter; Composing advertisements for use as web pages; Composing advertisements for use as webpages; Computerised business promotion; Copywriting; Copywriting for advertising and promotional purposes; Corporate identity services; Creating advertising material; Database marketing; Design of advertising brochures; Design of advertising flyers; Design of advertising materials; Design of marketing surveys; Developing promotional campaigns for businesses; Developing promotional campaigns for business; Development and implementation of marketing strategies for others; Development of marketing strategies and concepts; Development of promotional campaigns; Digital advertising services; Direct market advertising; Direct marketing; Direct marketing services; Distribution of advertising, marketing and promotional material; Displaying advertisements for others; Editing of publicity texts; Electronic billboard advertising; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Electronic publication of printed matter for advertising purposes; Estimations for marketing purposes; Event marketing; Exhibitions (Conducting -) for commercial purposes; Financial marketing; Graphic advertising services; Hire of advertising aids; Hire of advertising equipment; Hiring of advertising materials; Hiring of publicity materials; Information services relating to advertising; Internet marketing; Issuing and updating of advertising texts; Issuing of publicity leaflets; Layout services for advertising purposes; Loyalty, incentive and bonus program services; Management assistance for promoting business; Market campaigns; Marketing; Marketing agency services; Marketing information; Marketing services; Marketing by telephone; Marketing in the framework of software publishing; Marketing services in the field of dentistry; Marketing services provided by means of digital networks; Marketing the goods and services of others; Media buying services; Mediation of advertising; Negotiation of advertising contracts; Newspaper advertising; On-line advertising on computer networks; On-line advertising on a computer network; On-line advertising on computer communication networks; On-line advertising via a computer communications network; On-line promotion of computer networks and websites; Online advertisements; Online advertising services; Online advertising on a computer network; Online advertising via a computer communications network; Online advertising network matching services for connecting advertisers to websites; Online community management services; Organisation of prize draws for advertising purposes; Organisation of trade fairs for advertising purposes; Outdoor advertising; Pay per click advertising; Placing advertisements for others; Preparing and placing advertisements for others; Preparing and placing outdoor advertisements for others; Planning of marketing strategies; Planning services for advertising; Preparation and realization of media and advertising plans and concepts; Preparation of advertisements; Preparation of advertising campaigns; Preparation of advertising matter; Preparation of advertising material; Preparation of custom advertisements for others; Preparation of mailing lists for direct mail advertising services [other than selling]; Preparation of marketing plans; Preparation of publicity leaflets; Preparation of publicity columns; Preparation of publicity documents; Preparation of publicity publications; Preparation of publicity material; Preparation of trade publicity texts; Preparation of reports for marketing; Preparing advertisements for others; Preparing and placing of advertisements; Preparing audio-visual presentations for use in advertising; Preparing promotional and merchandising material for others; Presentation of companies on the Internet and other media; Presentation of companies and their goods and services on the Internet; Press advertising services; Prize draws (Organising of -) for advertising purposes; Prize draws (Organising of -) for promotional purposes; Producing promotional videotapes, video discs, and audio visual recordings; Product demonstrations and product display services; Product marketing; Production of sound recordings for marketing purposes; Production of video recordings for marketing purposes; Product sampling; Production and distribution of radio and television commercials; Production of advertising materials; Production of advertising matter; Production of advertising material; Production of advertising films; Production of advertising matter and commercials; Production of visual advertising matter; Production of video recordings for advertising purposes; Production of sound recordings for advertising purposes; Production of commercials; Production of television commercials; Production of radio commercials; Production of infomercials; Production of radio advertisements; Production of television and radio advertisements; Production of sound recordings for publicity purposes; Production of video recordings for publicity purposes; Promoting a series of films for others; Promoting the designs of others by means of providing online portfolios via a website; Promoting the artwork of others by means of providing online portfolios via a website; Promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with awards programs; Promoting the goods and services of others over the Internet; Promoting the goods and services of others; Promoting the goods and services of others via a global computer network; Promoting the goods and services of others via computer and communication networks; Promoting the goods and services of others by means of a preferred customer program; Promoting the goods and services of others by means of a loyalty rewards card scheme; Promoting the goods and services of others through advertisements on Internet websites; Promoting the goods and services of others through discount card programs; Promoting the music of others by means of providing online portfolios via a website; Promoting the sale of goods and services of others through promotional events; Promoting the sale of the services [on behalf of others] by arranging advertisements; Promotion, advertising and marketing of on-line websites; Promotion [advertising] of business; Promotion of insurance services, on behalf of third parties; Promotion of special events; Promotion services; Promotional services; Promotional advertising services; Promotional and advertising services; Promotional marketing services using audiovisual media; Promotional advertising carried out via the telephone; Promotional advertising for exploration projects; Promotional advertising relating to philosophical instruction; Promotional advertising relating to philosophical training; Promotional marketing; Promotional services provided by telephone; Providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; Providing a searchable online advertising guide featuring the goods and services of online vendors; Providing advertising services; Providing advice in the field of business management and marketing; Providing assistance in the field of product commercialization; Providing assistance in the field of product commercialization within the framework of a franchise contract; Providing business marketing information; Providing information in the field of marketing; Providing marketing information via websites; Providing searchable online advertising guides; Provision of advertising space, time and media; Provision of advertising information; Provision of information relating to advertising; Provision of information relating to marketing; Provision of marketing information; Provision of marketing reports; Provision of models for advertising; Provision of models for promotional purposes; Public relations; Public relations agency; Public relations services; Publication of advertising matter; Publication of advertising texts; Publication of advertising literature; Publication of printed matter for advertising purposes; Publication of printed matter for advertising purposes in electronic form; Publication of publicity material; Publication of publicity materials; Publication of publicity materials on-line; Publication of publicity materials and texts; Publication of publicity texts; Publicity; Publicity agencies; Publicity agency services; Publicity agents; Publicity and advertising; Publicity services; Publicity bureau services; Rental (Publicity material -); Publicity material rental; Publicity column preparation; Publicity columns preparation; Publicity publication services; Publicity material (Rental of -); Publicity leaflets (Issuing of -); Rental of publicity matter; Rental of publicity material; Publicity and promotional services; Publicity texts (Writing of -); Publicity texts (Publication of -); Publicity material (Preparation of -); Publicity and sales promotion services; Radio advertising; Radio advertising and commercials; Radio and television advertising; Referral marketing; Rental of all publicity and marketing presentation materials; Rental of sales stands; Rental of signs for advertising purposes; Reproduction of advertising material; Response advertising; Sales promotion; Sales promotion for others; Sales promotion for others through trading stamp schemes; Sales promotion for third parties; Sales promotion services; Sales promotion services for third parties; Sales promotion services, namely the bringing together of a variety of providers of telecommunication enabling others to conveniently view and purchase these services; Sales promotion using audiovisual media; Sales promotions at point of purchase or sale, for others; Scriptwriting for advertising purposes; Search engine marketing services; Search engine optimisation; Search engine optimisation for sales promotion; Search engine optimisation services; Search engine optimization; Search engine optimization for sales promotion; Services of advertising agencies; Services with regard to product presentation to the public; Sponsorship search; Sponsorship search consultancy services; Targeted marketing; Telemarketing services; Telephone marketing services [not selling]; Television advertising; Texts (Publication of publicity -); Texts (Writing of publicity -); Writing of publicity texts; Trade marketing [other than selling]; Trade promotional services; Trade show and commercial exhibition services; Trade show and exhibition services; Updating advertising material; Updating of advertising material; Updating of advertising information on a computer data base; Video recordings for marketing purposes (Production of -); Video recordings for advertising purposes (Production of -); Video recordings for publicity purposes (Production of -); Web indexing for commercial or advertising purposes; Web site traffic optimization; Web site traffic optimisation; Advisory services relating to public relations; Assistance to management in commercial enterprises in respect of public relations; Consultancy regarding public relations communications strategy; Consultancy relating to public relations; Public relations consultancy; Arranging of displays for business purposes; Arranging of displays for commercial purposes; Communication media (Presentation of goods on -), for retail purposes; Demonstration of goods for promotional purposes; Demonstration of goods for advertising purposes; Preparation and presentation of audio visual displays for advertising purposes; Presentation of financial products on communication media, for retail purposes; Presentation of goods on communications media, for retail purposes; Presentation of goods and services; Presentation of goods on communication media, for retail purposes; Administration of consumer loyalty programs; Administration of frequent flyer programs; Administration of loyalty and incentive schemes; Administrative loyalty card services; Organisation and management of business incentive and loyalty schemes; Sales promotion through customer loyalty programs; Promoting the sale of goods and services of others by awarding purchase points for credit card use; Organisation, operation and supervision of customer loyalty schemes; Customer club services, for commercial, promotional and/or advertising purposes; Customer loyalty services for commercial, promotional and/or advertising purposes; Customer relationship management; Loyalty scheme services; Administration of loyalty programs involving discounts or incentives; Administration of loyalty rewards programs featuring trading stamps; Administration of loyalty rewards programs; Administration of sales promotion incentive programs; Administration of sales and promotional incentive schemes; Providing and rental of advertising space on the internet; Provision of advertising space; Provision of advertising space by electronic means and global information networks; Provision of advertising space on a global computer network; Provision of advertising space on electronic media; Provision of space on websites for advertising goods and services; Provision of space on web-sites for advertising goods and services; Provision of computerised advertising services; Rental of advertisement billboards; Advertisement billboards (Rental of -); Advertising space (Rental of -); Advertising space (Rental of -) on the internet; Renting of advertising spaces; Rental of advertising space; Rental of advertising space on-line; Rental of advertising space on the Internet for employment advertising; Rental of advertising space on the internet; Rental of advertising space on web sites; Rental of advertisement space and advertising material; Rental of advertisement space; Rental of advertising time on communication media; Rental of billboards; Rental of digital billboards; Rental of billboards [advertising boards]; Advertising material (Dissemination of -); Dissemination of advertising material; Dissemination of advertising materials; Dissemination of advertising and promotional materials; Dissemination of advertising, marketing and publicity materials; Distribution and dissemination of advertising materials [leaflets, prospectuses, printed material, samples]; Dissemination of advertising material [leaflets, brochure and printed matter]; Dissemination of advertising material [leaflets, brochures and printed matter]; Direct mail advertising; Direct mail advertising services; Direct mail advertising services provided by lettershops; Direct mail advertising to attract new customers and to maintain the existing customer base; Dissemination of advertising for others; Dissemination of advertising for others via the Internet; Dissemination of advertisements; Dissemination of advertisements and of advertising material [flyers, brochures, leaflets and samples]; Dissemination of advertisements via the Internet; Dissemination of advertising for others via an on-line communications network on the internet; Dissemination of advertising via online communications networks; Advertising by mail order; Advertising flyer distribution; Advertising flyer distribution for others; Arranging the distribution of advertising samples in response to telephone enquiries; Dissemination of advertising matter; Dissemination of advertising matter online; Dissemination of advertising matter by mail; Dissemination services of advertisement matter; Distribution of advertising matter; Distribution of advertising materials; Distribution of advertising material; Distribution of advertising brochures; Distribution of advertising leaflets; Distribution of advertising announcements; Distribution of advertising samples; Distribution of printed advertising matter; Distribution of products for advertising purposes; Distribution of advertising material by post; Distribution of prospectuses for advertising purposes; Distribution of samples for advertising purposes; Distribution of advertising mail and of advertising supplements attached to regular editions; Distribution of prospectuses and samples for advertising purposes; Distribution of flyers, brochures, printed matter and samples for advertising purposes; Distribution of promotional leaflets; Distribution of promotional material; Distribution of promotional matter; Distribution of printed promotional material by post; Distribution of advertisements and commercial announcements; Distribution of prospectuses and samples; Distribution of publicity texts; Distribution of publicity materials, namely, flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales [whether crossborder or not]; Distribution of publicity materials (flyers, prospectuses, brochures, samples, particularly for catalogue long distance sales) whether cross border or not; Distribution of publicity leaflets; Distribution of samples for publicity purposes; Distribution of samples; Handbill distribution; Mail-order advertising; Promoting the goods and services of others by distributing coupons; Promoting the goods and services of others through the distribution of discount cards; Promoting the sale of goods and services of others through the distribution of printed material and promotional contests; Publicity brochure distribution; Sample distribution; Samples (Distribution of -); Advice relating to business management; Advice relating to business organisation; Advice relating to the organisation and management of business; Advising commercial enterprises in the conduct of their business; Advising industrial enterprises in the conduct of their business; Advisory services for business management; Advisory services relating to business organization; Advisory services relating to business management; Advisory services relating to business management and business operations; Advisory services relating to business organisation; Advisory services relating to business organisation and management; Advisory services relating to the corporate structure of businesses; Advisory services relating to the corporate structure of companies; Advisory services relating to business administration; Assistance, advisory services and consultancy with regard to business analysis; Assistance, advisory services and consultancy with regard to business planning; Assistance, advisory services and consultancy with regard to business organization; Assistance, advisory services and consultancy with regard to business management; Assistance and advice regarding business management; Assistance and advice regarding business organization; Assistance and advice regarding business organization and management; Assistance and advice regarding business organisation and management; Assistance and consultancy relating to business management and organisation; Business acquisitions (Advice relating to -); Business administration consultancy; Business consultancy relating to the administration of information technology; Business advice, inquiries or information; Business advisory services relating to product development; Business advisory services relating to company performance; Business management advisory services relating to industrial enterprises; Business management advisory services relating to commercial enterprises; Business appraisal consultancy; Business consultancy; Business consultancy (Professional -); Business consultancy services; Business management consultancy; Business organisation consultancy; Business organization consultancy; Business consultancy to individuals; Business consultancy to firms; Business management consultancy services; Business management organisation consultancy; Business consultation; Business consultation services; Business merger consultation; Business management consultation; Business organizational consultation; Business consulting; Business consulting services; Business consulting for enterprises; Business management consulting; Business organisation consulting; Business organization consulting; Business research consulting; Business management consulting services; Business planning and business continuity consulting; Business organization and management consulting; Business organisation and management consulting; Business organisation and management consulting services; Business management consulting services in the field of information technology; Business management advice; Business management advice and assistance; Business management advisory services; Business management consultancy and advisory services; Business efficiency advice; Business management and organisation consultancy services; Business management and organisation consultancy; Business management and organization consultancy; Business management and organization consultancy services; Business management consultancy services provided via the Internet; Business management consultancy via the Internet; Business management consultancy, also via the Internet; Business management consultancy in the field of executive and leadership development; Business mergers (Advice relating to -); Business organisation advice; Business organisation and management consultancy; Business organization advice; Business organization and operation consultancy; Business planning consultancy; Consultancy and advisory services in the field of business strategy; Commercial consultancy; Consultancy relating to business management; Consultancy and advisory services for business management; Consultancy and advisory services relating to business management; Consultancy (Professional business -); Consultancy regarding business organisation and business economics; Consultancy regarding the organization or managing of a trade company; Consultancy relating to business acquisition; Consultancy relating to business document management; Consultancy relating to business efficiency; Consultancy relating to business management and organisation; Consultancy relating to business analysis; Consultancy relating to business organisation; Consultancy relating to the establishment and running of businesses; Corporate image development consultation; Corporate management consultancy; Corporate management consultancy services; Management advice; Management advisory services related to franchising; Market reporting consultancy; Market reporting services; Management consulting; Management (Advisory services for business -); Professional business consultation relating to the operation of businesses; Professional business consultation relating to the setting up of businesses; Professional business consultations; Providing assistance in the field of business organisation; Strategic business consultancy; Analysis of market research statistics; Analysis of market research data; Analysis of market research data and statistics; Analysis of markets; Computerised market research; Computerized market research services; Conducting business and market research surveys; Conducting market surveys; Conducting marketing studies; Conducting of market research; Conducting of market studies involving opinion polling; Collection of information relating to market analysis; Collection of information relating to market research; Collection of information relating to market studies; Collection of market research information; Business and market research; Corporate image studies; Interpretation of market research data; Interviewing for qualitative market research; Interviewing for market research purposes; Market analysis; Market analysis and research services; Market analysis and research; Market analysis reports; Market analysis services; Market analysis studies; Marketing analysis; Market survey analysis; Marketing analysis services; Market research and analysis; Market surveys; Surveys (Market -); Market assessment services; Market assessment consultancy; Market research; Research (Market -); Market research services; Market research consultancy; Market research data collection services; Market research data retrieval services; Market research and analysis services; Market research by means of a computer database; Market research by means of a computer data base; Market research for advertising; Market research services relating to broadcast media; Market research services regarding customer loyalty; Market research services regarding Internet usage habits; Marketing forecasting; Public opinion polling; Public opinion polling services; Public opinion polls (Operating of -); Public opinion polls (Conducting of -); Public opinion surveys; Preparation of market analysis reports; Preparation of marketing surveys; Marketing research and analysis; Market surveys conducted by telephone; Research services relating to advertising; Research services relating to advertising and marketing; Statistical evaluations of marketing data; Advice relating to marketing management; Business advice relating to marketing management consultations; Advisory services relating to marketing; Advertising and marketing consultancy; Advisory services relating to advertising; Business consultation relating to advertising; Consultancy regarding advertising communications strategy; Consultancy regarding advertising communication strategies; Consultancy relating to advertising; Consultancy relating to advertising and promotion services; Business advice relating to marketing; Business advice relating to strategic marketing; Business advice relating to advertising; Advisory services relating to corporate identity; Advisory services relating to sales promotion; Advisory services relating to promotional activities; Advisory services relating to publicity for franchisees; Analysis of marketing trends; Advice on the analysis of consumer buying habits and needs provided with the help of sensory, quality and quantity-related data; Advertising consultation; Consulting services relating to marketing; Consulting services relating to publicity; Consulting services in the field of Internet marketing; Consultancy relating to business advertising; Consultancy relating to marketing; Consultations relating to business promotion; Direct marketing consulting; Market segmentation consultation; Marketing advice; Marketing management advice; Marketing (Business advice relating to -); Marketing advisory services; Marketing assistance; Marketing consultancy; Marketing consultation services; Marketing consulting; Organisation of promotions using audiovisual media; Press advertising consultancy; Professional consultancy relating to marketing; Promotion of goods and services through sponsorship; Providing advice relating to the analysis of consumer buying habits; Providing assistance in the field of business promotion; Providing marketing consulting in the field of social media; Provision of advice relating to marketing; Provision of marketing advisory services for manufacturers; Publicity (Advisory services relating to -); Provision of information and advisory services relating to e-commerce; Acquisition of business information relating to company status; Acquisition of business information relating to company activities; Acquisition of commercial information; Business information (Compilation of -); Compilation of business information; Compilation of business statistics and commercial information; Business records management; Collecting business information; Collecting business statistics; Collecting information for business; Collection of commercial information; Collection of statistics for business; Commercial information (Compilation of -); Compilation of business data; Compilation of business directories; Compilation of business directories for publishing on the Internet; Directories (Compilation of business -); Compilation of business statistics; Compilation of online business directories; Compilation of commercial registers; Compilation of company information; Compilation of direct mailing lists; Compilation of lists of prospective customers; Compilation of mailing lists; Compilation of registers relating to importers; Compilation of registers relating to exporters; Computerised compilation of customer indexes; Computerised compilation of order lists; Consultancy relating to the preparation of business statistics; Drawing up of business statistical information; Financial records management; Preparation of business statistics; Preparation of business statistical data; Preparation of statistics [business]; Statistics (Preparation of business -).

Another category of contested services is that which relates to the field of auctioneering, which implies the process of buying and selling goods or services by offering them up for bid, taking bids and then selling to the highest bidder. They have nothing in common with the services of the opponent in classes 35 and 41, since they lack a coinciding purpose and are not offered by the same companies, nor target the same public or are offered through the same channels of distribution, are neither complementary or in competition. Therefore, the following contested services are considered dissimilar:

Arranging of auction sales; Arranging of auctions; Arranging and conducting of Internet auctions; Auction and reverse auction services; Auction sales (Arranging of -); Auctioneering provided on the internet; Auctioneering services provided via telecommunication networks; On-line auctioneering; On-line auction bidding for others; Arranging and conducting auctions; Arranging and conducting of auctions and reverse auctions via mobile telephones; Arranging and conducting of auctions and reverse auctions via computer and telecommunication networks; Arranging and conducting of telephone auctions; On-line auctioneering services via the Internet; On-line trading services in which seller posts products to be auctioned and bidding is done via the Internet; Conducting of auction sales; Auctioning via telecommunication networks; Carrying out auction sales; Conducting interactive virtual auctions; Organisation of internet auctions; Providing on-line auction services; Telephone and television auctions.

Business administration services, such as the contested services listed hereunder, are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

When comparing business administration services to advertising or promotion it should be noted that these services are usually dissimilar, since a professional who helps with the execution of business decisions or the performance of business operations will not offer advertising strategies. In the present case, there are no connections between the contested services belonging to this category and those for which the earlier mark is registered in Classes 35 and 41. The following contested services are therefore found to be dissimilar to those of the opponent:

Accountancy, book keeping and auditing; Accounting services for mergers and acquisitions; Consultancy and information services relating to accounting; Accountancy; Accountancy services; Accountancy advice relating to taxation; Accountancy advice relating to tax preparation; Accountancy advice relating to the preparation of tax returns; Accountancy services relating to accounts receivable; Tax advice [accountancy]; Tax consultancy [accountancy]; Accounting; Accounting advisory services; Accounting consultancy relating to taxation; Accounting for third parties; Accounting services; Accounting, in particular book-keeping; Accounting services for pension funds; Accounting services relating to costs for farming enterprises; Accounting services relating to tax planning; Computerized accounting services; Business accounting advisory services; Tax return advisory [accountancy] services; Accounts (Preparation of -); Administration, billing and reconciliation of accounts on behalf of others; Administrative accounting; Accounts (Drawing up of statements of -); Advice on tax preparation; Advisory services relating to tax preparation; Auditing of accounts; Book-keeping; Balance sheet accounting; Bookkeeping for electronic funds transfer; Business accounts management; Computerised accounting (Maintenance of -); Computerised accounting (Preparation of -); Computerised auditing; Computerised book-keeping; Computerised tax assessments (preparation of -) [accounting]; Computerised business records keeping; Consultancy relating to auditing; Consultancy relating to tax accounting; Consulting and information concerning accounting; Health care cost management; Cost management accounting; Cost accounting; Preparation of tax declarations; Preparation of tax returns; Tax returns (Preparation of -); Preparation of income tax returns; Preparation of documents relating to taxation; Preparation of statements of accounts; Tax assessment preparation; Tax assessment [accounts] preparation; Tax consultations [accountancy]; Tax declaration procedure services; Tax filing services; Tax planning [accountancy]; Tax preparation; Tax preparation and consulting services; Tax return preparation; Taxation [accountancy] consultation; Taxation [accountancy] consultancy; Taxation [accountancy] advice; Tracking and monitoring energy consumption for others for account auditing purposes; Tracking and monitoring fluctuation in gasoline prices for others for account auditing purposes; Automated data processing; Advisory services relating to data processing; Advisory services relating to electronic data processing; Administrative services relating to credit card registration; Compilation and systematisation of information in databanks; Compilation and input of information into computer databases; Compilation and systemisation of information into computer databases; Compilation and systemization of written communications and data; Compilation and systemization of information into computer databases; Compilation and systemization of information used in electronic transmissions; Compilation of computer databases; Compilation of data; Compilation of data in computer databases; Compilation of information onto computer databases; Compilation of directories for publishing on global computer networks or the internet; Compilation of directories for publication on the internet; Compilation of directories for publishing on the internet; Compilation of information into computerised registers; Compilation of indexed addresses; Compilation of information into computer databases; Computer databases (Compilation of information into -); Collection of data; Collating of data in computer databases; Collection and systematisation of information into computer databases; Business file management; Business consultancy services relating to data processing; Compilation of mathematical data; Compilation of statistical data relating to medical research; Compilation of statistical data for use in scientific research; Compilation of statistical information; Compilation of statistics; Compilation of statistics relating to health care utilization; Compiling of information into computer databases; Compiling of statistics; Computer data processing; Computer database management; Computer database management services; Computerized database management; Computerised database management services; Computerized database management services; Computer databases (Systemization of information into -); Computer file management; Computerised file management; Computerized file management; Management (Computerized file -); File management (Computerized -); Management of computer files; Management of computerised files; Computerised business information retrieval; Computerised business information processing services; Computerised data management; Computerised data-base management; Computerised data processing; Computerised data verification; Data-base management (Computerised -); Computerised register management; Consultancy relating to data processing; Credit card registration services; Data collection [for others]; Data compilation for others; Data entry and data processing; Data inputting services; Data management; Data management services; Database management; Database management services; Data processing; Data processing for businesses; Data processing for the collection of data for business purposes; Data processing management; Data processing services; Data processing services in the field of healthcare; Data processing services in the field of payroll; Data processing verification; Data retrieval services; Data search in computer files for others; Data searches in computerised files for others; Electronic data processing; Information services relating to data processing; Management and compilation of computerised databases; Management of computer databases; On-line data processing services; Processing of business survey results; Records management services, namely, document indexing for others; Services comprising the composition of statistical data; Services comprising the recording of statistical data; Services comprising the transcription of statistical data; Statistical analysis and reporting; Statistics (Compilation of -); Systematization of data in computer databases; Systemisation of information into computer databases; Systemization of information into computer databases; Administrative services relating to the relocation of personnel; Advice relating to personnel management; Advisory services relating to personnel recruitment; Advisory services relating to personnel placement; Consultancy and advisory services relating to personnel management; Consultancy and advisory services relating to personnel recruitment; Consultancy and advisory services relating to personnel placement; Assistance relating to recruitment and placement of staff; Auditioning of performing artists [selection of personnel]; Business advisory services provided to determine pay and grading structures; Business advisory services to determine pay and grading structures by job evaluation; Business organisation and management consultancy in the field of personnel management; Business recruitment consultancy; Career advisory services (other than education and training advice); Career information and advisory services (other than educational and training advice); Career networking services; Career placement; Career placement consulting services; Career planning consultancy; Clerical employment agency services; Collection of personnel information; Conducting employee incentive award programs; Consultancy of personnel recruitment; Consultancy relating to management selection; Consultancy relating to personnel management; Consultancy relating to the management of personnel; Consultancy relating to the selection of personnel; Consultancy relating to personnel recruitment; Dissemination of information relating to the recruitment of graduates; Employee leasing; Employee record services; Employee relocation services; Employment agency services for personnel in general office positions; Employment agencies; Employment agency services; Employment agency services provided for nannies; Employment agency services relating to nurses; Employment agency services for temporary work assignments; Employment agency services the provision of staff for the manning of show houses; Employment agency services for people skilled in the use of computers; Employment agency services relating to placement of medical and nursing personnel; Employment agency services relating to bilingual staff; Employment agency services relating to au pairs; Employment booking services for performing artists; Employment booking services for film television technicians; Employment consultancy; Employment consultancy services; Employment consultancy services relating to data processing personnel; Employment bureau services; Employment counselling; Employment counselling and consultancy services; Employment counselling services; Employment management services for film television technicians; Employment outplacement services; Employment placement services for butlers; Employment placement services for personal assistants; Employment placement services for housekeepers; Employment recruiting consultancy; Interviewing services [for personnel recruitment]; Internship placement services; Information services relating to jobs and career opportunities; Human resources management; Human resources consultancy; Human resources consultation; Headhunting services; Executive selection services; Executive search and selection services; Executive search services; Executive search and placement services; Executive recruitment services; Employment recruiting services; Employment recruitment; Evaluation of personnel requirements; Executive placement services; Executive recruiting services; Job agency services; Job agency services for medical personnel; Job agency services for para-medical personnel; Job placement; Job placement consultancy; Job and personnel placement; Job matching services; Labor exchanges; Management consultancy (Personnel -); Personnel management consultancy; Personnel management consultancy services; Personnel management and employment consultancy; Labour exchange services; Matching skilled volunteers with non-profit organisations; Model recruitment agencies; Modeling agency services; Modeling for advertising or sales promotion; Modeling services for advertising or sales promotion; Modelling agency services relating to advertising; Modelling agency services for advertising purposes; Modelling agency services for sales promotion purposes; Modelling agency services relating to sales promotions; Modelling and models for advertising or sales promotion; Modelling for advertising or sales promotion; Nanny placement services; Office support staff recruitment services; Organising and conducting job fairs; Permanent staff recruitment; Personal management consultancy services; Personality testing for recruitment purposes; Personality testing for the selection of personnel; Personnel agency services relating to the electronics industry; Personnel consultancy; Personnel recruitment consultancy; Personnel placement consultancy; Personnel management; Personnel management advice; Personnel management assistance; Personnel management assistance services; Personnel management consultation; Personnel management consulting; Personnel management for advertising purposes; Personnel management of marketing personnel; Personnel management of sales personnel; Personnel management services; Personnel resources management; Personnel placement; Personnel placement and recruitment; Personnel placement services; Placement of permanent personnel; Placement of temporary personnel; Personnel recruitment; Personnel recruitment advertising; Personnel recruitment agency services; Personnel recruitment services and employment agencies; Personnel recruitment services; Recruitment of personnel; Recruitment of flight personnel; Recruitment of airline personnel; Recruitment of high-level management personnel; Personnel relocation; Personnel selection [for others]; Personnel services; Publicity personnel management services; Personnel selection using psychological testing; Placement of design staff; Placement of staff; Preparation of résumés for others; Professional consultancy relating to personnel management; Professional recruitment services; Providing employment information; Providing employment counseling services; Providing employment information via a global computer network; Providing information relating to personnel recruitment; Providing information relating to employment recruitment; Providing information relating to employee relocation services; Providing recruitment information via a global computer network; Providing temporary office support staff; Provision of administrative staff; Provision of advice relating to the recruitment of graduates; Provision of commission sales staff; Provision of contract sales forces; Provision of information relating to recruitment; Provision of nominee company directors; Provision of sales staff; Psychometric testing for the selection of personnel; Psychological testing for the selection of personnel; Recruiting of office support staff; Recruitment advertising; Recruitment and placement services; Recruitment consultancy services; Recruitment consultancy for lawyers; Recruitment consultancy for legal secretaries; Staff recruitment consultancy services; Recruitment consultants in the financial services field; Recruitment of executive staff; Recruitment of airport ground staff; Recruitment of computer staff; Recruitment of temporary personnel; Recruitment of temporary technical personnel; Recruitment (Personnel -); Recruitment services; Staff recruitment services; Recruitment services for sales and marketing personnel; Relocation services (Employee -); Secretarial employment services; Secretarial employment agency services; Selection of personnel; Selection of executive personnel; Testing (Psychological -) for the selection of personnel; Selection of staff; Serving as a human resources department for others; Staff placement services; Staff recruitment; Staff utilisation planning; Support for employees with regard to business matters; Talent agency services [business management of performing artists]; Temporary assignment of personnel; Temporary assignment of employees; Temporary employment agencies; Temporary personnel employment services; Temporary personnel services; Temporary placement of employees (Services for the -); Testing to determine employment skills; Testing to determine professional competency; Testing to determine job competency; Theatrical casting agency; Work analysis to determine worker skill sets and other worker requirements; Writing of résumés for others; Writing of curriculum vitae for others; Addressing envelopes; Addressing of envelopes; Administrative services relating to the management of legal dockets; Appointment scheduling services [office functions]; Appointment reminder services [office functions]; Bill presentment services; Billing services; Billing; Billing services in the field of energy; Billing services in the field of healthcare; Business invoicing services; Business secretarial services; Clerical services for making appointments; Clerical services for the handling of enquiries; Clerical services for the taking of sales orders; Company office secretarial services; Computerised inventory preparation; Computerised inventory control; Computerised payroll preparation; Computerised stock management; Computerized word processing; Conference call transcription services; Confirming scheduled appointments for others; Copying of documents; Copying of documents for others; Copying services; Data transcription; Document preparation; Document reproduction; Electricity meter reading for billing purposes; Electronic stock management services; Execution of stenographic work to order; Initiating telephone calls for others; Inserting printed matter into envelopes; Inventories (Preparation of -); Preparation of inventories; Inventory control; Inventory management; Inventory management services; Inventory management of parts and components for manufacturers and suppliers; Invoicing; Invoicing services; Document reproduction [photocopying services]; Maintenance of registers [for others]; Medical billing; Medical billing services for doctors; Medical billing services for hospitals; Message transcription; Payroll preparation; Preparation of payrolls [for others]; Payroll assistance; Payroll advisory services; Office management services [for others]; Office administration services [for others]; Payroll processing services [for others]; Maintenance of personnel records [for others]; Key return registration; Keypunching [office functions]; Mail sorting, handling and receiving; Preparation of invoices; Photocopying; Photocopying services; Preparation of mailing lists; Preparation of pay packets; Processing telephone inquiries regarding advertised goods and services; Preparation of wage slips; Processing warranty registration documents for others; Processing (Word -); Word processing; Word processing services; Word processing and typing services; Provision of clerical assistance; Provision of clerical and secretarial services; Provision of initial company secretarial services on company formation; Provision of secretarial services; Registration and transcription of written communications; Reproduction (Document -); Reproduction services (Document -); Reproduction of drawings; Reproduction of files [paper]; Reproduction of records [paper]; Reprographic services; Secretarial services; Secretarial and clerical services; Shorthand secretarial services; Secretarial services provided by hotels; Secretariat services; Shareholder record keeping services; Shorthand; Shorthand services; Shorthand typing; Stenographic transcription; Stenography; Stenotyping; Stock control services; Stocktaking; Telephone billing; Transcription; Transcription of communications; Transcription of communications [office functions]; Transcription of data; Transcription of messages; Transcription of recorded communications; Transcription services; Typewriting; Typewriting agency services; Typing; Typing agency services; Typing services; Updating and maintenance of data in computer databases; Utility meter reading for billing purposes; Wage-packets (Preparation of -); Wage payroll preparation; Water meter reading for billing purposes; Xerography.

Contested services in Class 41

The following contested services are all included in the opponent’s broad categories of educational services and entertainment services. Consequently, these are all to be found identical:

Audio and video production, and photography; Audio entertainment services; Entertainment services for sharing audio and video recordings; Audio, video and multimedia production, and photography; Education and instruction services; Entertainment, education and instruction services; Educational and training services; Education and training services; Entertainment; Entertainment information; Entertainment services; Entertainment provided via the internet; Audio and video editing services; Audio and video recording services; Audio production; Audio production services; Audio, film, video and television recording services; Adult education services relating to management; Adult education services relating to medicine; Adult training; Advice relating to medical training; Conducting distance learning instruction at the secondary level; Conducting distance learning instruction at the primary level; Conducting distance learning instruction at the college level; Conducting distance learning instruction at the graduate level; Conducting distance learning instruction at the university level; Conducting educational support programmes for healthcare professionals; Conducting educational support programmes for patients; Conducting educational workshops in the field of business; Conducting instructional courses; Correspondence courses; Courses (Training -) relating to medicine; Courses (Training -) relating to research and development; Education and training services in the field of occupational health and safety; Education in the field of data processing; Education in the field of computing science.

The following contested services belong to the categories of publishing and reporting and have therefore nothing in common with any of the opponent’s services in classes 35 or 41 which all, contrary to the opponent’s arguments, relate to very different fields of activities as already described earlier. Since they lack a coinciding purpose are not offered by the same companies, nor target the same public or are offered through the same channels of distribution, neither complementary or in competition these are considered dissimilar:

Editing of written text; Editing of written texts; Digital video, audio and multimedia entertainment publishing services; Electronic publication services; Providing electronic publications; Electronic publications (not downloadable); Electronic publishing; Electronic publishing services; Editing of texts (except publicity texts); Consultation services relating to the publication of books; Consultation services relating to the publication of magazines; Consultation services relating to the publication of written texts; Advisory services relating to publishing; Multimedia publishing of electronic publications; Multimedia publishing of books; Multimedia publishing of printed matter; Multimedia publishing of magazines, journals and newspapers; Multimedia publishing; Multimedia entertainment software publishing services; Music publishing services; On-line publishing services; On-line publication of electronic books and journals; News reporters services; News reporting services; News reporting; Providing non-downloadable electronic publications relating to language training; Providing non-downloadable electronic publications from a global computer network or the Internet; Providing on-line electronic publications; Providing on-line electronic publication [not downloadable]; Providing on-line electronic publications, not downloadable; Providing on-line non-downloadable general feature magazines; Providing on-line publications; Providing electronic publications [not downloadable]; Proof reading of manuscripts; Online publication of electronic books and journals; Online electronic publishing of books and periodicals; Online publication of electronic newspapers; Providing electronic publications relating to language training, not downloadable; Providing electronic publications from a global computer network or the Internet, not downloadable; On-line publication of electronic books and journals (non-downloadable); Newspaper publishing; Newspaper publication; News syndication reporting; News syndication for the broadcasting industry; Provision of on-line electronic publications; Providing on-line publications (non-downloadable); Providing on-line publications (not downloadable); Providing online electronic publications; Providing online comic books, not downloadable; Providing online electronic publications in the field of music, not downloadable; Provision of electronic publications (not downloadable); Publication of books; Publication of brochures; Publication of printed matter in electronic form.

Contested services in Classes 38 and 42

The remaining contested services in these classes, which include services belonging to the fields of telecommunication, information technology, design, testing, authentication and quality control, medical and pharmacological research, science and engineering are also to be considered dissimilar to the services of the opponent’s earlier mark in Classes 35 and 41, since they clearly do not have any relevant points of contact.

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 goods and services found to be identical or similar to - at least - a low degree may be directed at the public at large, who purchases the goods, or orders the services in question for personal use, and at professionals with specific knowledge or expertise, who will use the goods and services to support enterprise business processes.

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

3. The signs

Loop	HLOOP
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).

Contrary to the opponent’s arguments, 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 common letters ‘LOOP’ in both signs may be a meaningful word in English, but it is not meaningful in other territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, namely on the Italian-, Portuguese- and Spanish-speaking parts of the public for which both marks have no meaning in relation to the goods and/or services in question and their degree of distinctiveness is normal.

Both marks are word marks. It is noted, in that respect, that in the case of word marks, it is the word as such that is protected and not its written form. It follows as well that the signs have no elements that are more dominant than others, as argued by the applicant.

Visually and aurally, the signs coincide in ‘LOOP’ (irrespective of the different pronunciation rules in the aforementioned parts of the relevant territory), which is the only element of the earlier mark and the second part, of the contested sign. The signs differ in the first letter ‘H’ of the contested sign.

The applicant argues that the signs are different because of the fact that the first letter of the contested sign is different, which changes the structure of the sign entirely. However, the Opposition Division considers that even if this letter is placed at the beginning of the contested sign and pronounced separately (as argued by the applicant), and this is the element to which consumers usually pay more attention, one differentiating letter does not create sufficient differences to offset this similarity.

Therefore, both visually and aurally the signs are similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the parts of the relevant territory under examination. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 normal.

5. 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/or 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).

As concluded above, part of the contested goods and services are at least similar to a low degree and some of the services are identical, and they target both the general public with an average degree of attention as well as business customers with a higher than average degree of attention. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to a high degree, whereas the conceptual comparison remains neutral. The contested sign incorporates the earlier mark in its entirety and only differs in one additional letter ‘H’ at its beginning, which is not sufficient to counteract the fact that the signs are similar. Therefore, it is highly conceivable that the relevant consumers, even in relation to the goods and services for which the level of attention will be higher than average, will assume that the goods and services in question come from the same undertaking or economically linked undertakings.

In addition, account must be 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). Even consumers with 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).

Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-, Portuguese- and Spanish-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 No 15 764 681. 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.

The rest of the contested goods and 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

José Antonio GARRIDO OTAOLA

Cynthia DEN DEKKER

Nicole CLARKE

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.