OPPOSITION Nо B 3 051 917

 

System1 Research Limited, 52 Bedford Row Holborn, London WC1R 4LR, United Kingdom (opponent), represented by Page, White & Farrer Limited, Bedford House, John Street, London WC1N 2BF, United Kingdom (professional representative) 

 

a g a i n s t

 

System1, LLC, 10400 Ne 4th Street, Suite 500, 98004 Bellevue, United States of America (applicant), represented by Mitscherlich, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative)

On 24/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 051 917 is upheld for all the contested services.

 

2.	European Union trade mark application No 17 375 403 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

The opponent filed an opposition against all the services of European Union trade mark application No 17 375 403 ‘SYSTEM1’ (word mark). The opposition is based on, inter alia, international trade mark registration No 1 350 727 designating the European Union, ‘SYSTEM1 RESEARCH’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to this earlier right, and in relation to other earlier rights also Article 8(4) EUTMR.

PRELIMINARY REMARK

On 4/10/2019 the parties were informed of the fact that the opposition proceedings were suspended because the examination on absolute grounds of the European Union trade mark application No 17 375 403 (i.e. the contested) was being reopened.

The European Union trade mark application No 17 375 403 (i.e. the contested) was partially rejected pursuant to the final decision of the Operations Department rendered on 07/05/2020, further to absolute grounds examination. The parties were duly informed, and the opponent maintained the opposition.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier right mentioned above.

 

a)  The services

 

The services on which the opposition is based are, inter alia, the following:

 

Class 35: Advertising, marketing, promotion services, data processing; business consultancy services; analysis of business information; telecommunication services for providing access to computer databases.

Class 38: Telecommunication services for providing access to computer databases.

The contested services are the following:

 

Class 35: Marketing services; mobile and digital advertising and marketing services, namely, creation of marketing tools designed to increase a client company's knowledge of customer segments, advertising strategy and sales strategy; preparation and realization of advertising plans and concepts; development of digital marketing strategies and concepts; digital statistical evaluations of marketing data; data processing in the fields of website optimization and the provision of personalized internet content based on an individual's internet use; provision of business information and data in the fields of website optimization and the provision of personalized internet content based on an individual's internet use; consumer strategy business consulting in the fields of marketing, sales, operation, and product design particularly specializing in the use of analytic models for the understanding and predicting of consumer, business, and retail market trends and actions; advertising, promotion and marketing services in the nature of e-mail blast campaigns for others.

Class 42: Electronic data storage; Internet search engine services to consumers and businesses. 

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

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

 

However, the term ‘namely’, used in the applicant´s list of services shows the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

 

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

 

Contested services in Class 35

The contested marketing services; mobile and digital advertising and marketing services, namely, creation of marketing tools designed to increase a client company's knowledge of customer segments, advertising strategy and sales strategy; development of digital marketing strategies and concepts; digital statistical evaluations of marketing data; advertising, promotion and marketing services in the nature of e-mail blast campaigns for others; preparation and realization of advertising plans and concepts are included at least in one of the following broad categories in Class 35 of the opponent: advertising, marketing, promotion services. Therefore, they are identical.

The contested provision of business information and data in the fields of website optimization and the provision of personalized internet content based on an individual's internet use overlap with the opponent´s analysis of business information in Class 35 of the opponent. Therefore, they are identical.

The contested data processing in the fields of website optimization and the provision of personalized internet content based on an individual's internet use are included in the broad category of the opponent´s data processing in Class 35 of the opponent. Therefore, they are identical.

The contested consumer strategy business consulting in the fields of marketing, sales, operation, and product design particularly specializing in the use of analytic models for the understanding and predicting of consumer, business, and retail market trends and actions are included in the broad category of the opponent´s business consultancy services in Class 35 of the opponent. Therefore, they are identical.

Contested services in Class 42

The contested internet search engine services to consumers and businesses are highly similar to the opponent´s telecommunication services for providing access to computer databases in Class 38, since they can coincide in purpose, in distribution channels/points of sale and can originate from the same kind of undertakings and are complementary.

The contested electronic data storage are similar to the opponent´s telecommunication services for providing access to computer databases in Class 38 of the opponent because they can coincide in purpose, are complementary, coincide in distribution channels/points of sale and are frequently offered by the same kind of undertakings.

 

b)  Relevant public — degree of attention

  

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical or similar (to varying degrees) are directed at professionals (e.g. internet search engine services to businesses), and part of them also at the public at large (e.g. internet search engine services to consumers).

In the present case, the degree of attention paid by consumers during the purchase of these services is deemed to vary from average to high. For instance, in relation to services such as internet search engine services to consumers, nothing in their nature, their manner of purchase or price (frequently free and available online) requires that consumers are particularly attentive and observant when choosing such services. Therefore, the degree of attention is considered to be average in relation to them. However, in relation to other services that are expensive and/or not frequently purchased and/or can have an impact on the business, such as development of digital marketing strategies and concepts or provision of personalized internet content based on an individual's internet use, a high attention is likely to be paid during the purchase.

c)  The signs

 

SYSTEM1 RESEARCH	SYSTEM1
Earlier trade mark	Contested sign

  

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The differing word ‘RESEARCH’ in the earlier mark is an English term meaning ‘a systematic investigation to establish facts or collect information on a subject’ (Seen in www.collinsdictionary.com on 16/11/2020). This word will be understood by the English-speaking part of the relevant public as having the concept described, and it is void of distinctive character in relation to the part of the opponent´s services that are somehow related to investigation, study or analysis of some sort (e.g. data processing; business consultancy services; analysis of business information). The term is of lower than average distinctive character in relation to the rest of the services of the opponent in relation to which it is at least allusive of their characteristics (e.g. of fact that the services may involve some kind of research or investigation before they are provided). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

In this regard, the applicant argues that “the term "Research" has some distinctiveness, at least EUIPO accepted already the word mark registration 002943371 RESEARCH (A9) in the year 2003”. However, the trade mark referred to by the applicant was registered for goods in Classes 3, 9, 18 and 25, which are not herein involved. Therefore, the analysis of the distinctive character of the mark in relation to said goods is irrelevant for the present proceedings, and not sufficient of invalidating the explanations above. The applicant´s argument is therefore set aside.

In any event, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

The common element ‘SYSTEM1’ is formed by the English word ‘System’ and number ‘1’. The word ‘system’ means ‘any scheme or set of rules to classify, explain or calculate’ (Seen in www.collinsdictionary.com on 16/11/2020). When used in relation to certain goods or services, such as software or software-related services, the word is perceived as meaning an organization of hardware and software that function together as a unit, or as an abbreviated form to refer to ‘operating system’. Number ‘1’ is frequently used to indicate that something is the first/best of its kind.

In the present case, the word ‘system’ is of average distinctive character for the kind of services herein involved, in relation to which it is neither descriptive nor allusive. Number ‘1’ is also of average distinctive character in this case, since it is perceived as conceptually linked to the word ‘system’ (e.g. as meaning ‘the first system’ or ‘system number one of a series’). Lastly, the combination ‘system1’ is considered of average distinctive character in relation to the relevant services, since it is neither descriptive nor allusive of their characteristics, and does not constitute an expression/word/combination frequently used in relation to them.

In relation to the distinctiveness of the element ‘SYSTEM1’, the applicant claims that “the term "SYSTEM]." has a very low distinctiveness and has even been rejected as a trademark by several trademark offices including EUIPO: With an appeal decision of February 26, 2018 (Appeal No.: R1809-2007-2), a trademark application for the word mark "SYSTEM]." for the goods "Computer programs, namely software for the management and monitoring of the status of industrial equipment" has been rejected by EUIPO. The corresponding database extract from the EUIPO online database is enclosed as A1. Unfortunately, the decision of the Appeal Board itself cannot be downloaded. Consequently, we can only refer to a summary of the decision in the PAVIS database (A2) and its English translation (A3). Apparently, the Appeal Board of EUIPO rejected the trademark application "SYSTEM]." since the term indicates that the applicant's mark is the number one, i.e. the product with the first ranked quality (…)

In addition, the German Patent and Trademark Office rejected the trademark application for the word mark "System 1" in the year 1998. A corresponding database extract from the German Patent and Trademark Office is enclosed as A4. The application has been filed for the following goods: "Data processing equipment and Computers" and has been rejected to be descriptive since the term indicates that the goods "refer to a System 1" (A5). The Opponent has chosen the trademark format "SYSTEM]." with additional word elements in order to avoid a descriptiveness objection by the UKIPO and EUIPO. Consequently, the opponent's trademarks are also limited to this scope of protection for these marks” (emphasis added)

The applicant has applied for the trade mark ‘SYSTEM1’ itself, although it considers the sign to be of low/no distinctive character, as seen in its arguments above. Nevertheless, the Opposition Division notes that the distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003,
T-348/02, ‘Quick’, §29). Therefore, the sign ’SYSTEM1’ is to be assessed in relation to the services at issue, in relation to which it is distinctive, as explained above, being irrelevant for the purpose of the present decision the examination of the same sign in relation to different goods or services, as it is the cases and decisions referred to by the applicant.

As claimed by the opponent, the coincidences between the marks are found at the beginning of the earlier mark, which is formed by the entire contested sign. In this regard, it must be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the impact of the coinciding element in the earlier mark are of greater weight, due to its position.

 

Visually and aurally, the signs coincide in ‘SYSTEM1’ (and its sound), which constitutes the entire contested sign and the most distinctive element of the earlier mark. It is also the part of the earlier mark with a greater visual impact, due to its position, as explained above. The signs differ in the word ‘RESEARCH’ (and its sound) of the earlier mark which is the element of less weight within that sign, for the reasons explained above.

For all of the above, it is considered that the signs are visually and aurally similar to a high degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concepts described above for ‘SYSTEM1’, and differ in the concept of ‘RESEARCH’. Based on the explanations above, it can be concluded that the coincidences are found in the element with greater weight in the earlier mark and the only one forming the contested sign. At the same time, it has been explained above that the differences are found in the element of less weight within the earlier mark.

For all of the above, it is considered that the signs are conceptually similar to a high degree.

 

d)  Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

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

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the word ‘RESEARCH’, considered void of distinctive character or of low distinctive character for the services concerned, as stated above in section c) of this decision.

 

e)  Global assessment, other arguments and conclusion

The signs compared are visually, aurally and conceptually similar to a high degree. The coincidences are found in the fact that the contested sign is entirely included in the earlier mark, in which it is the element of greater weight, for being the most or only distinctive element in the mark, and due to its position (i.e. first element read and pronounced). At the same time, the differences are found on an element that is of reduced impact, due to its position at the end of the sign, and for being of low/no distinctive character.

The earlier mark is of average distinctive character.

The services compared are partly identical and partly similar (to varying degrees). They are directed at professionals, and part of them also at the public at large. The degree of attention paid by consumers during the purchase of these services is deemed to vary from average to high.

The coincidences are found in the element with greater weight in the earlier mark and the only one forming the contested sign. At the same time, it has been explained above that the differences are found in the element of less weight within the earlier mark.

There is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects. Even if the word ‘RESEARCH’ of the earlier mark is spotted by consumers as a difference between the marks, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, in the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

  

Therefore, the opposition is well founded on the basis of international trade mark registration designating the European Union No 1 350 727, ‘SYSTEM1 RESEARCH’ (word mark). It follows that the contested trade mark must be rejected for all the contested services.

 

As the earlier international trade mark registration designating the European Union No 1 350 727leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Also, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition invoked (i.e. Article 8(5)EUTMR, also invoked in relation to the earlier mark European Union No 1 350 727 and Article 8(4) EUTMR, invoked in relation to the remaining earlier rights)

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Saida CRABBE

María del Carmen SUCH SANCHEZ

Manuela RUSEVA

 

 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.