OPPOSITION No B 3 046 942

Shape9

OPPOSITION DIVISION

OPPOSITION No B 3 046 942

Salesforce.com, Inc., Salesforce Tower 415 Mission Street, 3rd Floor, 94105 San Francisco, United States (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Deskforce LTD, Tzeret 15, PO box 8090, 9108002 Jerusalem, Israel (applicant), represented by IP Consulting Ltd., 6-8 Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative).

On 22/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 942 is partially upheld, namely for the following contested goods and services:

Class 9: Teaching apparatus; magnetic data carriers, recording discs; cash registers; calculating machines; data processing equipment; computers; answering machines; electric apparatus for commutation; computer memory devices; computer programmes [programs], recorded; computer keyboards; computer operating programs, recorded; computer peripheral devices; computer software, recorded; computer programs [downloadable software]; computer game software; computer software applications, downloadable; data processing apparatus; dictating machines; disk drives for computers; disks, magnetic; fibre [fiber (Am)] optic cables; microphones; microprocessors; modems; monitors [computer hardware]; monitors [computer programs]; notebook computers; radiotelephony sets; record players; security tokens [encryption devices]; sound recording carriers; sound recording strips; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; switchboards; sounding apparatus and machines; tablet computers; telephone receivers; telephone apparatus; telephone transmitters; telephone wires; teletypewriters; telephone receivers; telephone recorders; teleprompters; transmitters of electronic signals; transmitters [telecommunication]; transmitting sets [telecommunication]; video recorders; video screens; video telephones; artificial intelligence apparatus; humanoid robots with artificial intelligence.

Class 38: Telecommunications; rental of access time to global computer networks; providing access to databases; communications by telephone; communications by cellular phones; communications by computer terminals; communications by fibre optic networks; facsimile transmission; message sending; paging services [radio, telephone or other means of electronic communication]; rental of telecommunication equipment; providing telecommunications connections to a global computer network; telecommunications routing and junction services; teleconferencing services; telephone services; rental of telephones; telex services; transmission of electronic mail; transmission of digital files; providing user access to global computer networks; video-on-demand transmission; videoconferencing services; voice mail services; wireless broadcasting.

Class 42: Providing information about the design and development of computer hardware and software; design and development of computer hardware; design and development of computer software; server hosting; software as a service [SaaS]; technical research; conducting technical project studies; technical writing; technological consultancy; telecommunications technology consultancy; updating of computer software; cloud computing; computer programming; computer software design; computer system design; data encryption services; electronic data storage; installation of computer software; maintenance of computer software; monitoring of computer systems by remote access; monitoring of computer systems to detect breakdowns; monitoring of computer systems for detecting unauthorized access or data breach; off-site data backup; data mining.

2. European Union trade mark application No 17 512 211 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 17 512 211 for the figurative mark Shape1 .

The opposition is based on the following:

1. European Union trade mark registration No 16 193 435 for the word mark ‘FORCE’

2. European Union trade mark registration No 13 497 813 for the word mark ‘SALESFORCE’

3. International trade mark registration No 1 122 482 designating European Union for the word mark ‘DESK.COM’

4. European Union trade mark registration No 16 190 316 for the figurative mark Shape2 .

The opponent invoked Article 8(1)(b) EUTMR.

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

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

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 1, European Union trade mark registration No 16 193 435, for the word mark ‘FORCE’.

a) The goods and services

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

Class 9: Computer software; computer software development tools; [computer] software and downloadable [computer] software for use in developing and customizing computer software applications and computer software application user interfaces; computer software for mobile phones and devices; computer software for storing, managing, tracking, analyzing, and reporting data in the fields of marketing, promotion, sales, customer information, customer relationship management, sales support, and employee efficiency; computer software to facilitate communicating among peer professionals in the advertising, marketing, and business services fields.

Class 35: Business management services, namely, providing information, data asset, and identity management services; compilation and management of computerized databases and consulting services related thereto; business management services, namely, providing customer relationship management services and sales support management services; business management consulting services relating to customer relationship management, sales support management, and marketing automation; providing general information of interest in the fields of business, marketing, advertising, brand development, promotion, sales, sales support, customer information, customer relationship management (CRM), customer service, business analytics, cloud computing, employee efficiency, e-commerce and software development and advisory services via a website; operating online marketplaces for buying and selling, sharing, and offering for free computer software and on-demand applications; business and marketing data analytics services; marketing and advertising services; organizing and conducting tradeshows in the fields of business, marketing, advertising, brand development, promotion, sales, sales support, customer information, customer relationship management (CRM), customer service, business analytics, cloud computing, employee efficiency, e-commerce, and software development.

Class 38: Computer communication services, namely providing online facilities for real-time interaction with other computer users concerning topics of general interest; providing on-line forums for transmission of messages among computer users concerning topics of general interest; providing access to computer networks for real-time interaction with other computer users concerning topics of general interest; chat room services for social networking; communication services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the internet, information services networks and data networks; delivery of messages by electronic transmission; electronic data interchange; electronic mail and messaging services; electronic transmission of data, images, messages, documents, and mail; instant messaging services; message sending and receiving services; peer-to-peer network computer services, namely, electronic transmission of audio, video and other data and documents among computers; providing an on-line forum for discussion of business analytics, marketing, sales, service, and strategy; providing internet chat rooms; providing on-line electronic bulletin boards for transmission of messages among computer users concerning business analytics, marketing, sales, service, and strategy; providing internet chat rooms; telecommunications, in particular mobile telephone services, telephone services, fax services, radio communication services, paging services, telex services, telegram services, e-mail data services; telecommunications via telecommunications networks, in particular mobile phone networks or satellite-supported telecommunications networks; wireless mobile phone services; mobile telecommunications services, included in Class 38; cellular telephone communication; television and radio transmission; television and/or radio broadcasting; mobile phone television broadcasting; videoconferencing; news and information agencies within the framework of press agencies; electronic mail-forwarding of messages of all kinds to internet addresses (webmessaging); computer-aided transmission of messages and images; electronic transmission of data, messages, images, documents and information relating to topics of general interest; wireless telecommunications through electronic transmission of data, sound, messages, images, information and documents via the internet; providing access to online computer databases; providing access to electronic publications on the internet; wireless telecommunications through electronic transmission of data, sound, messages, images, information and documents via the internet; providing access to information on the internet and on the mobile internet, in particular access to downloadable files, namely sound, image, music and video recordings, all the aforesaid files in particular for downloading for mobile telephones and other mobile terminals; transmission of information stored on databases, namely by means of interactive computer systems and/or by providing access to information on the internet (included in class 38); telecommunications services via the internet, intranets, extranets; procuring access to databases; providing access to a global computer network; providing access to data on computer networks, namely information, texts, drawings and images concerning goods and services; providing access to data on the internet and on the mobile internet, namely information and messages in the form of sound or images; providing access to software on data networks for Internet access; providing access to information for entertainment on computer networks; providing internet chatrooms, electronic exchange of messages and information via chatlines, chatrooms and internet forums; telecommunications by means of platforms and portals on the internet; providing telecommunications channels for teleshopping services; e-mail services; transmitting information and data via computer networks and the internet; leasing access time to a computer database; leasing of access time to internet games; rental or lease of access time to computer databases.

Class 41: Educational services, namely, conducting seminars, conferences, workshops, and computer application training in the fields of business, marketing, advertising, brand development, promotion, sales, sales support, customer information, customer relationship management (CRM), customer service, business analytics, cloud computing, employee efficiency, e-commerce and software development, and distributing course materials in connection therewith; publication of printed matter, namely, books, newspapers and periodicals, and online books, newspapers and periodicals, other than for advertising purposes; publication of instructional and information materials in the nature of pamphlets, brochures, manuals, informational flyers, informational sheets and newsletters.

Class 42: Platform as a Service [PaaS]; Software as a Service [SaaS]; Providing temporary use of on-line non-downloadable software to store, manage, track, analyze, and report data in the field of marketing, promotion, sales, customer information, customer relationship management, sales support, employee efficiency, e-commerce, and software development; providing temporary use of on-line non-downloadable software to facilitate communicating among peer professionals in the advertising, marketing and business services fields, and for customizing computer application user interfaces; computer services, namely, designing, developing, and maintaining computer software applications and websites for others and consulting services related thereto; providing temporary use of online non-downloadable computer software application development tools and programming language for use in developing, analyzing, coding, checking, and controlling other computer software; providing temporary use of online non-downloadable computer software that implements a procedural and object-oriented programming language; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others; and consulting services related thereto.

Class 45: On-line social networking services; licensing of computer systems and software; security consulting and security services.

The contested goods and services are the following:

Class 9: Teaching apparatus; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers; calculating machines; data processing equipment; computers; fire-extinguishing apparatus; fire extinguishing apparatus; answering machines; electric apparatus for commutation; computer memory devices; computer programmes [programs], recorded; computer keyboards; computer operating programs, recorded; computer peripheral devices; computer software, recorded; computer programs [downloadable software]; computer game software; computer software applications, downloadable; data processing apparatus; dictating machines; disk drives for computers; disks, magnetic; fibre [fiber (Am)] optic cables; microphones; microprocessors; modems; monitoring apparatus, electric; monitors [computer hardware]; monitors [computer programs]; mouse pads; notebook computers; radiotelephony sets; record players; security tokens [encryption devices]; semi-conductors; sound recording carriers; sound recording strips; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; sound locating instruments; sounding lines; sounding apparatus and machines; sounding leads; switchboards; switchboxes [electricity]; switches, electric; tablet computers; telephone receivers; telephone apparatus; telephone transmitters; telephone wires; teletypewriters; telephone receivers; telephone recorders; teleprompters; terminals [electricity]; transmitters of electronic signals; transmitters [telecommunication]; transmitting sets [telecommunication]; video recorders; video screens; video telephones; artificial intelligence apparatus; humanoid robots with artificial intelligence.

Class 42: Industrial analysis and research services in the field of chemistry; providing information about industrial analysis and research services; industrial analysis and research services relating to automobile tires; providing information about the design and development of computer hardware and software; design and development of computer hardware; design and development of computer software; server hosting; software as a service [SaaS]; surveying; technical research; conducting technical project studies; technical writing; technological consultancy; telecommunications technology consultancy; updating of computer software; cloud computing; computer programming; computer software design; computer system design; data encryption services; electronic data storage; installation of computer software; maintenance of computer software; monitoring of computer systems by remote access; monitoring of computer systems to detect breakdowns; monitoring of computer systems for detecting unauthorized access or data breach; off-site data backup; data mining.

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

The term ‘in particular’, used in the opponent’s list of services in Class 38 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 opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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

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

Contested goods in Class 9

The contested computer programmes [programs], recorded; computer operating programs, recorded; computer software, recorded; computer programs [downloadable software]; computer game software; computer software applications, downloadable; monitors [computer programs] are included in the broad category of, or overlap with, the opponent’s computer software. Therefore, they are identical.

The contested teaching apparatus; cash registers; calculating machines; data processing equipment; computers; data processing apparatus; notebook computers; tablet computers; artificial intelligence apparatus; humanoid robots with artificial intelligence are similar to the opponent’s computer software as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested dictating machines are considered similar to the opponent’s computer software since a link exists between these IT goods and they can be considered as being complementary. Although their nature might be different, they usually coincide in producer, relevant public and distribution channels.

The contested record players; sound transmitting apparatus; sound recording apparatus; sound reproduction apparatus; sounding apparatus and machines; video recorders are pieces of apparatus used to transmit/record/reproduce sound and/or images and therefore are similar to the opponent’s computer software. These goods may have the same producers, relevant public and distribution channels. In addition, they may be complementary.

The contested computer keyboards; computer peripheral devices; microphones; modems; monitors [computer hardware]; video screens are computer peripheral devices. Every such device has a driver program that operates and controls the particular device. These goods are considered similar to the opponent’s computer software since they can have the same distribution channels and target the same consumers. Furthermore, they are complementary.

The contested microprocessors are similar to the opponent’s computer software as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested answering machines; electric apparatus for commutation; fibre [fiber (Am)] optic cables; radiotelephony sets; telephone receivers; telephone apparatus; telephone transmitters; telephone wires; teletypewriters; telephone receivers; switchboards; telephone recorders; teleprompters; transmitters of electronic signals; transmitters [telecommunication]; transmitting sets [telecommunication]; video telephones are similar to the opponent’s telecommunications in Class 38, in particular mobile telephone services, telephone services, fax services, radio communication services, paging services, telex services, telegram services, e-mail data services as both goods and services allow communication thus they coincide in purpose and, indeed, they are complementary. They usually coincide in relevant public and distribution channels.

The contested magnetic data carriers, recording discs; computer memory devices; disk drives for computers; disks, magnetic; sound recording carriers; sound recording strips belong to the broad category of ‘data storage devices and media’. There is a close correlation between the opponent’s various types of software and data storage devices, as they very often come with their own integrated software. The reality in the market is that consumers are likely to believe that these goods could coincide in origin or producer. Therefore, these goods are considered to be similar to a low degree to computer software.

The contested security token [encryption devices] is a physical device used to gain access to an electronically restricted resource. It acts like an electronic key to access something and comes with its own integrated software. This contested good is considered similar to a low degree to the opponent’s computer software as they usually coincide in producer. Furthermore, they are complementary.

The contested mechanisms for coin-operated apparatus are parts of vending machines or other machines that are activated by inserting a coin. The Opposition Division cannot find any material connection between any of the opponent’s goods in Class 9 and services in Classes 35, 38, 41, 42 and 45. The contested goods differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same undertakings. Therefore, they are dissimilar.

The contested fire-extinguishing apparatus; fire extinguishing apparatus are dissimilar to all the opponent’s goods and services as they have different natures, purposes and methods of use. They do not coincide in their producers and they have different distribution channels.

The contested switchboxes [electricity]; switches, electric; terminals [electricity]; semi-conductors are dissimilar to all the opponent’s goods and services. They differ in their nature and purpose. They usually have different distribution channels, sales outlets and producers. Furthermore, they have different methods of use. They are neither in competition with nor complementary to each other.

The contested mouse pads and the opponent’s goods and services in Classes 9, 35, 38, 41, 42 and 45 are deemed to be dissimilar, as they do not coincide in any of the criteria that may, alone or in combination, give rise to a degree of similarity between them. Although some of them may target the same relevant public, they differ in their purpose, nature and method of use. Moreover, they usually have different producers or distribution channels and are neither complementary nor in competition with each other.

The contested monitoring apparatus electric; sound locating instruments; sounding lines; sounding leads are monitoring and measuring apparatus. They are dissimilar to the opponent’s goods and services. They differ in their nature and purpose, distribution channels, sales outlets, producers and method of use. They are neither in competition with each other nor complementary to each other.

Contested services in Class 38

The contested telecommunications is identical to the opponent’s services in Class 38, namely telecommunications, in particular mobile telephone services, telephone services, fax services, radio communication services, paging services, telex services, telegram services, e-mail data services despite the different wording.

The contested rental of access time to global computer networks; providing access to databases; communications by telephone; communications by cellular phones; communications by computer terminals; communications by fibre optic networks; facsimile transmission; message sending; paging services [radio, telephone or other means of electronic communication]; rental of telecommunication equipment; providing telecommunications connections to a global computer network; telecommunications routing and junction services; teleconferencing services; telephone services; rental of telephones; telex services; transmission of electronic mail; transmission of digital files; providing user access to global computer networks; video-on-demand transmission; videoconferencing services; voice mail services; wireless broadcasting are included in the broad category of the opponent’s telecommunications, in particular mobile telephone services, telephone services, fax services, radio communication services, paging services, telex services, telegram services, e-mail data services. Therefore, they are identical.

The contested services in Class 42

The contested software as a service [SaaS] is identically contained in both lists of services.

The contested cloud computing is a software distribution model in which a third-party provider hosts applications and makes them available to customers over the internet. This contested service includes as a broader category the opponent’s software as a service [SaaS]. Since the Office cannot dissect ex officio the broad category of the contested cloud computing, it is considered identical to the opponent’s software as a service [SaaS].

The contested server hosting is similar to the opponent’s platform as a service [PaaS] to the extent that they have the same purposes, providers and distribution channels and they target the same public.

The contested providing information about the design and development of computer hardware and software; design and development of computer hardware; design and development of computer software; technical research; conducting technical project studies; technical writing; technological consultancy; telecommunications technology consultancy; updating of computer software; computer programming; computer software design; computer system design; data encryption services; electronic data storage; installation of computer software; maintenance of computer software; monitoring of computer systems by remote access; monitoring of computer systems to detect breakdowns; monitoring of computer systems for detecting unauthorized access or data breach; off-site data backup; data mining are all IT or IT-related services. Therefore they are at least similar to the opponent’s online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others; and consulting services related thereto in Class 42 as they have the same nature, they may coincide in relevant public and distribution channels and they are often provided by the same company. Some of the contested services are even identical (e.g. the contested design and development of computer software includes as a broader category the opponent’s online hosted computer services, namely, designing, developing computer software applications for others).

The contested industrial analysis and research services in the field of chemistry; providing information about industrial analysis and research services; industrial analysis and research services relating to automobile tires; surveying are dissimilar to all the opponent’s goods and services in Classes 9, 35, 38, 41, 42 and 45. They differ in their nature and purpose. They usually have different distribution channels, sales outlets and producers. Furthermore, they have different methods of use and they are not in competition.

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the IT field.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase, their price and terms and conditions of purchase.

c) The signs

FORCE

Shape3

Earlier trade mark

Contested sign

The relevant territory is 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Since the verbal elements ‘FORCE’ and ‘DESK FORCE’ of the earlier mark and contested sign, respectively, are meaningful in English, it is considered appropriate to focus the following analysis on the English-speaking part of the public.

The earlier mark is a word mark consisting of the verbal element ‘FORCE’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower- or upper-case letters, or in a combination thereof.

The English word ‘FORCE’ refers to, inter alia, strength. Contrary to the applicant’s opinion the Opposition Division considers that the word ‘FORCE’ is not descriptive or laudatory in relation to the goods and services at issue as it does not describe or allude to any characteristics of these goods and services.

The applicant refers to previous decisions of the Examination Division to support its arguments. However, 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant in order to demonstrate the weakness of the word ‘FORCE’ are not relevant to the present proceedings since they refer to marks composed of the element ‘FORCE’ plus another word, such as ‘ForceProof’, ‘CONSTANT FORCE’, ‘PRICEFORCE’ that have a descriptive/laudatory meaning as a whole but not in the element ‘FORCE’ per se. As a matter of example, in the decision of the Examination Division on the EUTM No 14 354 013 ‘PRICEFORCE’ the EUTMA was refused on the basis of the laudatory promotional meaning of the expression ‘PRICEFORCE’ as a whole ‘The relevant consumer will understand the words as a meaningful expression: the power of the sum of money, for which anything is or may be bought or sold’.

In the case at issue there is not a direct link between the word ‘FORCE’ per se and the related goods and services as this term does not enable the public concerned to discern immediately and without further reflection the description of one of the characteristics of the goods and services. Moreover, contrary to the applicant’s arguments the Opposition Division deems that the word ‘FORCE’ as such, does not bring a laudatory promotional message. Therefore, this word element is considered distinctive in relation to all the relevant goods and services.

The contested sign is a figurative mark containing the verbal element ‘deskforce’ where the verbal element ‘desk’ is depicted in normal lower-case characters and the verbal element ‘force’ in bold lower-case characters. On the left of the element ‘deskforce’ there is a depiction of a stylised blue cloud with two curved lines on its right-hand side.

It must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

In the case at issue the conjoined elements ‘desk’ and ‘force’ are visually separated as one is in normal letters and the other in bold letters. Moreover, they have clear meanings for the relevant public. Therefore, considering the aforementioned principle, it is reasonable to assume that the relevant public will split up the verbal element ‘deskforce’ of the contested sign into the words ‘desk’ and ‘force’, because they are both meaningful words.

The word ‘desk’ of the contested sign refers to ‘a table, often with drawers, which you sit at to write or work’. The inherent distinctiveness of this term is average in relation to the relevant goods and services, as the word ‘desk’ has no connection to any of their essential characteristics.

The word ‘force’ of the contested sign has been already defined above and will be perceived with the same meaning and therefore, is of average distinctiveness also in the contested sign.

The conjoined expression ‘deskforce’ of the contested sign has no clear meaning as a whole, furthermore, it is not used, as such, in common parlance. Consequently, the relevant public in the relevant territory will instantly register and comprehend the meaning of the separate terms that compose this expression, since the whole of it does not form a unit perceived as different from the simple sum of its parts.

Bearing in mind that the contested goods and services found to be identical or similar to varying degrees to the opponent’s goods and services, comprising the telecommunication services in Class 38, are IT related, the cloud depiction of the contested sign is considered weak as it brings to mind that these goods and services are based on or related to cloud-computing or the field of IT.

The applicant argued that the public would also see a picture of headphones and some lines resembling sound waves in the figurative element of the contested sign . The Opposition Division deems that due to the stylisation of the figurative element it is unlikely that the public would perceive those elements. Furthermore, the picture of a blue cloud even with a certain stylisation is quite usual in the IT sector and, therefore, it is weak.

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

Visually, the signs coincide in the word ‘FORCE’ which constitutes the entire earlier mark and plays an independent and distinctive role in the contested sign. The signs differ in the additional word element of the contested sign, which is the word ‘desk’, and the figurative element of the contested sign, which, as explained above, has a lesser impact. It is true that ‘desk’ of the contested sign is the first element in the word sequence ‘deskforce’ and that in general consumers tend to focus on the initial part of the signs. However, it is noted that this principle of perception of signs is not absolute and different factors may influence its relevance. In the present case , the earlier mark ‘FORCE’ is completely included in the contested sign where the first word ‘desk’ is a little shorter than the shared element ‘force’ (in second position) and is depicted in thinner letters than the bold letters of the word ‘force’, making ‘force’ a distinctive word which plays an independent role in the contested sign. The signs also differ in slight stylisation of the word element ‘deskforce’ of the contested sign that has a mere decorative function.

Therefore, taking into account that the shared element ‘FORCE’ constitute the entire earlier mark and the abovementioned facts regarding the distinctiveness of the marks’ elements, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘FORCE’, present identically in both signs. The pronunciation differs in the sound of the word ‘DESK’ of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. There is a conceptual link between the signs due to the coinciding word element ‘FORCE’, which is inherently distinctive in relation to the goods and constitutes the entire earlier mark while playing an independent role in the contested sign. The marks differ in the additional concepts conveyed by the contested sign, namely those of the word ‘DESK’ and the depiction of a cloud, which is weak. Therefore, the marks are conceptually similar to an average degree.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that earlier European Union trade mark registration No 16 193 435 for the word mark ‘FORCE’ 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 goods and 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.

e) Global assessment, other arguments and conclusion

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

In the present case, the goods and services under comparison are partly identical or similar to varying degrees and partly dissimilar. The degree of attention may vary from average to high. The earlier mark enjoys an average degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to an average degree on account of the coinciding verbal element ‘FORCE’, constituting the earlier mark in its entirety and fully included, yet clearly perceptible, in the contested sign.

The signs differ in the additional word element of the contested sign ‘desk’ as well as in its figurative element (i.e. the cloud depiction with two curved lines), which, as explained before, is considered weak in relation to the relevant goods and services.

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application will not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

In the present case it has to taken into consideration that the earlier mark is fully included in the contested sign where it plays an independent and distinctive role. Indeed, in the present case, it is highly conceivable that consumers, even those ones displaying an high level of attention, may legitimately believe that the contested sign is a new extension/continuation or a new line of goods and services, provided under the opponent’s ‘FORCE’ mark, because the addition of sub-brands attached to the main/house-brand is a common market practice.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public even in relation to those goods and services that have been found similar to a low degree and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 193 435.

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.

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

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 goods and services cannot be successful.

With respect to the remaining contested goods and services, the examination of the opposition continues in relation to the opponent’s other earlier trade marks, which are European Union trade mark registration 2. No 13 497 813 for the word mark ‘SALESFORCE’, 3. International trade mark registration No 1 122 482 designating European Union for the word mark ‘DESK.COM’ and 4. European Union trade mark registration No 16 190 316 for the figurative mark Shape4 .

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

As abovementioned, the examination of the opposition continues in relation to the opponent’s other earlier trade marks. The Opposition Division finds it appropriate to follow with the evaluation of the likelihood of confusion in relation to the earlier European Union trade mark registration (2.) No 13 497 813 for the word mark ‘SALESFORCE’ and European Union trade mark registration (4.) No 16 190 316 for the figurative mark Shape5 .

a) The goods and services

The goods and services covered by European Union trade mark registration (2.) No 13 497 813 and on which the opposition is based are the following:

Class 9: Downloadable software in the nature of a mobile application; computer application software for mobile phones and devices; computer software, namely, downloadable and non-downloadable software development tools for the creation of mobile internet applications, web applications, websites, and client interfaces; web site development software; computer software for use in customer relationship management (CRM); computer software for creating searchable databases of information and data; computer software, namely, an application allowing sales and field service employees to update and receive data stored in an enterprise’s computer databases in real time, using a mobile device, with full telephony integration with the telephone and/or software features of the mobile device; computer software for providing an on-line database in the field of transaction processing to upload transactional data, provide statistical analysis, and produce notifications and reports; computer software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; downloadable software, mobile applications, and cloud computer software for providing data analytics, business analytics, business intelligence and for collecting and analyzing data; computer software for web and mobile applications for providing data analytics, business analytics, business intelligence and for collecting and analyzing data; enterprise software in the nature of a database for compiling data, customer data and customer interactions for enabling marketers to plan, personalize, optimize and customize communications with customers throughout the marketing, sales, and service lifecycle; downloadable computer programs and computer software for retrieving, tracking, analyzing, testing, measuring and managing data, customer data and customer interactions; downloadable computer programs and computer software for retrieving, tracking, analyzing, testing, measuring and managing data, customer data and customer interactions in the field of marketing, sales and service; downloadable computer programs and computer software recorded on data media for retrieving, tracking, analyzing, testing, measuring and managing data from computer networks and from the internet in the field of marketing, sales and service; computer application software for mobile phones, portable media players, handheld computers, namely, software for providing data analytics, business analytics, business intelligence and for collecting and analyzing data; downloadable computer software and computer software recorded on data media for the scanning, displaying, processing, measuring and output of data on computer networks, on the internet, and on mobile terminals and devices in the field of marketing, sales, services, business analytics, data analytics, and business intelligence; downloadable software for generating embeddable code for websites, for the purpose of creating, customizing, deploying, scheduling, tracking, analyzing, testing, measuring and managing online content on users’ websites, on social media websites, and other online forums; computer software for computer system and application development, deployment and management; scientific, surveying, photographic, cinematographic, optical, measuring, signaling, checking (supervision), and teaching apparatus and instruments; monitoring apparatus; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; calculating machines; computers and data-processing apparatus; computer memory devices; modems; facsimile machines; intercommunication apparatus; computer programs (recorded, downloadable); computer operating programs, recorded; games programs for computers; computer software (recorded, downloadable), in particular for the scanning, displaying, processing and output of multimedia data on computer networks, including the internet, and on mobile terminals; machine-readable data carriers of all kinds containing information, and sound and image recording carriers (except unexposed film), data and information pools recorded on data carriers (downloadable); electronic publications (downloadable); interfaces for computers and mobile devices; downloadable music and image files; downloadable ring tones for mobile phones; electric installations for the remote control of industrial operations.

Class 35: Business services, strategic planning services, and marketing data analytics services for businesses including for web and mobile sites; customer loyalty services for commercial, promotional and advertising purposes; marketing services for others, namely, marketing content development, media placement, strategy and management, social media strategy consultation, and social media community management; business consultancy services for others in connection with customer engagement and customer interactions on the internet and other media; assistance, advisory services and consultancy relating to business management, business planning, business analysis, business organization, business operations, advertising, marketing, sales and service; compilation and systemization of data, statistics, and information into computer databases; compilation and systemization of data and information into computer databases in the field of marketing, sales and services; office functions, namely, administration and indexing of information, websites and other information sources for business purposes; compilation of data, in particular, image, audio and/or video data in computer databases for business purposes; providing an on-line searchable database featuring information regarding sales, service and marketing; monitoring of social sites, internet postings, web content, and online content for others for business and marketing services; advertising, in particular television advertising, online advertising on computer networks, radio advertising, advertising by mail order, bill-posting, print and internet advertising; dissemination of advertising matter; direct mail advertising; advertising via mobile radio networks; advertising on mobile phone television; advertising on the internet for others; advertising agency services; planning and design of advertising activities; presentation of companies on the internet and other media for promotional purposes; distribution of samples; sales promotion (for others), public relations; market research, including in particular for others, on digital networks (webvertising); telemarketing services; market research and analysis services; PR agency services, namely public relations; commercial information agencies; writing of publicity texts; updating of advertising material; rental of advertising time on communication media; publication of publicity texts; publicity columns preparation; publicity material rental; production of advertising films; opinion polling; news clipping services; marketing; marketing studies; marketing research; rental of advertising space on the internet; layout services for advertising purposes; arranging advertising events; multimedia agency services (advertising); merchandising agency services, namely advertising, sales research and market studies and analysis; auctioneering on the internet; arranging and conducting of exhibitions and trade fairs for industrial (business), commercial and advertising purposes; business management and organization consultancy, in particular development of business concepts; personnel management consultancy; outsourcing services; business efficiency expert services; arranging of trading and economical contacts, also over the internet; arranging of contracts, for others, for the providing of services; arranging of contracts, for others, for the buying and selling of goods; procurement services for others; consumer consultancy with regard to products and claims management (office functions) via service hotlines for consumers, in particular for internet users (call center services); conducting research in computer files, in databases, on the internet and on computer networks, for others, with regard to business matters and into offers for goods and services; maintenance and compilation of data and information in computer databases; systematic ordering of data in computer databases; computerized file management; compilation of statistics; office functions for the administration and indexing of data and information; office functions for the creating of indexes with regard to information, websites and other information sources; compilation of data, in particular image, audio and/or video data in computer databases; optimization of online websites for third parties for marketing purposes.

Class 38: Computer communication services, namely providing online facilities for real-time interaction with other computer users concerning topics of general interest; providing on-line forums for transmission of messages among computer users concerning topics of general interest; providing access to computer networks for real-time interaction with other computer users concerning topics of general interest; chat room services for social networking; communication services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the internet, information services networks and data networks; delivery of messages by electronic transmission; electronic data interchange; electronic mail and messaging services; electronic transmission of data, images, messages, documents, and mail; instant messaging services; message sending and receiving services; peer-to-peer network computer services, namely, electronic transmission of audio, video and other data and documents among computers; providing an on-line forum for discussion of business analytics, marketing, sales, service, and strategy; providing internet chat rooms; providing on-line electronic bulletin boards for transmission of messages among computer users concerning business analytics, marketing, sales, service, and strategy; providing internet chat rooms; telecommunications, in particular mobile telephone services, telephone services, fax services, radio communication services, paging services, telex services, telegram services, e-mail data services; telecommunications via telecommunications networks, in particular mobile phone networks or satellite-supported telecommunications networks; wireless mobile phone services; mobile telecommunications services, included in Class 38; cellular telephone communication; television and radio transmission; television and/or radio broadcasting; mobile phone television broadcasting; videoconferencing; news and information agencies within the framework of press agencies; electronic mail; forwarding of messages of all kinds to internet addresses (webmessaging); computer-aided transmission of messages and images; electronic transmission of data, messages, images, documents and information relating to topics of general interest; wireless telecommunications through electronic transmission of data, sound, messages, images, information and documents via the internet; providing access to online computer databases; providing access to electronic publications on the internet; wireless telecommunications through electronic transmission of data, sound, messages, images, information and documents via the internet; providing access to information on the internet and on the mobile internet, in particular access to downloadable files, namely sound, image, music and video recordings, all the aforesaid files in particular for downloading for mobile telephones and other mobile terminals; transmission of information stored on databases, namely by means of interactive computer systems and/or by providing access to information on the internet (included in Class 38); telecommunications services via the internet, intranets, extranets; procuring access to databases; providing access to a global computer network; providing access to data on computer networks, namely information, texts, drawings and images concerning goods and services; providing access to data on the internet and on the mobile internet, namely information and messages in the form of sound or images; providing access to software on data networks for internet access; providing access to information for entertainment on computer networks; providing internet chatrooms, electronic exchange of messages and information via chatlines, chatrooms and internet forums; telecommunications by means of platforms and portals on the internet; providing telecommunications channels for teleshopping services; e-mail services; transmitting information and data via computer networks and the internet; leasing access time to a computer database; leasing of access time to internet games.

Class 41: Business education and training services; business education and training services in the field of marketing, sales, and service; publication of printed matter, books, newspapers and/or periodicals (other than for advertising purposes); publication of newspapers, periodicals and books, and of printed instructional and information material (other than for advertising purposes), in electronic form and/or on the internet; electronic desktop publishing; publication of texts, other than publicity texts; rental of printed publications; online publication of printed matter (other than for advertising purposes); editing of (mobile) websites; rental of sound recordings; digital picture service, namely editing photographs for others and services of a photo agency; production of television, mobile phone television and radio programs; film production, other than advertising films; conducting entertainment events, cultural events, live cultural and sporting events, training events, including in connection with applications for posting images, links, videos, text and other brand content, for retrieving, sorting, filtering and moderating user generated content and online communications, for managing brand content on social media websites and social networks, and for analyzing, retrieving and managing the performance of brand engagement; club services; coaching; correspondence courses; education information; educational examination; practical training; vocational retraining; arranging and conducting of conferences, congresses, concerts and symposiums, seminars, training courses, instructional and lecture events (cultural or educational purposes); arranging of exhibitions for cultural purposes, arranging of entertainment shows; online games services (on computer networks); conducting games (for entertainment) on the internet, including on the mobile internet; entertainment in the form of information on entertainment services via computer networks

Class 42: Computer software development in the field of mobile applications; providing temporary use of on-line non-downloadable software development tools; technical consulting services in the field of data management, data analytics, and business intelligence analytics; technical data analytics services; software as a service (SAAS) services featuring software for providing data analytics, business analytics, business intelligence and for collecting and analyzing data; platform as a service (PaaS) software in the nature of a database for compiling data, customer data and customer interactions for enabling marketers to plan, personalize, optimize and customize communications with customers throughout the marketing, sales, and service lifecycle; platform as a service (PaaS) featuring computer software platforms for retrieving, tracking, analyzing, testing, measuring and managing data, customer data and customer interactions; platform as a service (PaaS) featuring computer software platforms for retrieving, tracking, analyzing, testing, measuring and managing data, customer data and customer interactions in the field of marketing, sales and service; platform as a service (PaaS) featuring computer software platforms for enabling marketers to plan, personalize, optimize, monitor, analyze and measure customer interactions across channels and devices; platform as a service (PaaS) featuring computer software platforms for enabling marketers to plan, personalize, optimize, monitor, analyze and measure customer interactions across social media, customer relationship management (CRM) systems, point-of-sale systems, web analytics, web posts, email and mobile devices; consulting services in the field of providing online, non-downloadable software and applications; providing temporary use of on-line non-downloadable software; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others, and consulting services related thereto; technical research; information technology consulting services; installation of computer software; computer system design and analysis; data conversion of computer programs and data; maintenance of computer software; monitoring of computer systems by remote access; rental of computer software and web servers; scientific and technological services and research and design relating thereto; industry analysis and research services; design and development of computer hardware and software; computer software consultancy; computer system design and analysis including for posting images, links, videos, text and other brand content, for retrieving, sorting, filtering and moderating user generated content and online communications, for managing brand content on social media websites and social networks, and for analyzing, retrieving and managing the performance of brand engagement; creating and maintaining web sites for others; data conversion of computer programs and data; maintenance of computer software; monitoring of computer systems by remote access; providing search engines for the internet; styling; technical research; web site design consultancy; consultancy in the design and development of computer hardware; digitization of documents; duplication of computer programs; information technology consulting services; installation of computer software; provision of downloadable software and/or providing temporary use of non-downloadable software for generating embeddable code for websites, for the purpose of creating, customizing, deploying, scheduling, tracking, analyzing and managing online content on users’ websites, on social media websites and other online forums, and for analyzing, monitoring and managing the performance of brand engagement of others; provision of downloadable software and/or providing temporary use of non-downloadable software for creating and deploying customized interactive content on social profiles; packaging design / packaging design services; technical project studies; quality control; recovery of computer data; rental of web servers; research and development of new products for others; server hosting.

Class 45: Online social networking services for businesses and individuals via a global communications network; monitoring of social network sites and online content for others; internet-based social networking services; online social networking services in the field of business analytics, sales and service; licensing of computer systems and software; brand engagement and online communications investigations; brand engagement and online communications investigations (security services); monitoring of social sites and online content for others; online social networking services for others; registration of domain names; security consultancy.

The goods and services covered by European Union trade mark registration (4.) No 16 190 316 and on which the opposition is based are the following:

Class 35: Business services, strategic planning services, and marketing data analytics services for businesses including for web and mobile sites; customer loyalty services for commercial, promotional and advertising purposes; marketing services for others, namely, marketing content development, media placement, strategy and management, social media strategy consultation, and social media community management; business consultancy services for others in connection with customer engagement and customer interactions on the internet and other media; assistance, advisory services and consultancy relating to business management, business planning, business analysis, business organization, business operations, advertising, marketing, sales and the provision of business services including customer services; compilation and systemization of data, statistics, and information into computer databases; compilation and systemization of data and information into computer databases in the field of marketing, sales and services; office functions, namely, administration and indexing of information, websites and other information sources for business purposes; compilation of data, in particular, image, audio and/or video data in computer databases for business purposes; providing information regarding sales, service and marketing from an on-line computer database; monitoring of social sites, internet postings, web content, and online content for others for business and marketing services; advertising, in particular television advertising, online advertising on computer networks, radio advertising, advertising by mail order, bill-posting, print and internet advertising; dissemination of advertising matter; direct mail advertising; advertising via mobile radio networks; advertising on mobile phone television; advertising on the internet for others; advertising agency services; planning and design of advertising activities; presentation of companies on the internet and other media for promotional purposes; distribution of samples; sales promotion (for others), public relations; market research, including in particular for others, on digital networks (webvertising); telemarketing services; market research and analysis services; PR agency services, namely public relations; commercial information agencies; writing of publicity texts; updating of advertising material; rental of advertising time on communication media; publication of publicity texts; preparation of publicity materials; publicity material rental; production of advertising films; opinion polling; news clipping services; marketing; marketing studies; marketing research; rental of advertising space on the internet; layout services for advertising purposes; arranging advertising events; multimedia agency services (advertising); merchandising agency services, namely advertising, sales research and market studies and analysis; auctioneering on the internet; arranging and conducting of exhibitions and trade fairs for industrial (business), commercial and advertising purposes; business management and organization consultancy, in particular development of business concepts; personnel management consultancy; outsourcing services; business efficiency expert services; arranging of trading and economical contacts, also over the internet; arranging of contracts, for others, for the providing of services; arranging of contracts, for others, for the buying and selling of goods; procurement services for others; consumer consultancy with regard to products and claims management (office functions) via service hotlines for consumers, in particular for internet users (call center services); conducting research in computer files, in databases, on the internet and on computer networks, for others, with regard to business matters and into offers for goods and services; maintenance and compilation of data and information in computer databases; systematic ordering of data in computer databases; computerized file management; compilation of statistics; office functions for the administration and indexing of data and information; office functions for the creating of indexes with regard to information, websites and other information sources; compilation of data, in particular image, audio and/or video data in computer databases; optimization of online websites for third parties for marketing purposes; brand engagement and online communications investigations, namely monitoring and analyzing of consumer opinions, consumer habits and the reputation of a brand amongst consumers; brand evaluation services; organizing and conducting tradeshows in the fields of business, marketing, advertising, brand developments, sales, customer service, cloud computing, data analytics, customer information, customer relationship management, and employee efficiency; business consulting services in the field of business analytics; advertising and publicity services; monitoring of social sites and online content for others, namely, monitoring and analyzing of consumer opinions, consumer habits and the reputation of a brand amongst consumers.

Class 38: Computer communication services, namely providing online facilities for real-time interaction with other computer users concerning topics of general interest; providing on-line forums for transmission of messages among computer users concerning topics of general interest; providing access to computer networks for real-time interaction with other computer users concerning topics of general interest; chat room services for social networking; communication services, namely, transmission of voice, audio, visual images and data by telecommunications networks, wireless communication networks, the internet, information services networks and data networks; delivery of messages by electronic transmission; electronic data interchange; electronic mail and messaging services; electronic transmission of data, images, messages, documents, and mail; instant messaging services; message sending and receiving services; peer-to-peer network computer services, namely, electronic transmission of audio, video and other data and documents among computers; providing an on-line forum for discussion of business analytics, marketing, sales, service, and strategy; providing internet chat rooms; providing on-line electronic bulletin boards for transmission of messages among computer users concerning business analytics, marketing, sales, service, and strategy; providing internet chat rooms; telecommunications, in particular mobile telephone services, telephone services, fax services, radio communication services, paging services, telex services, telegram services, e-mail data services; telecommunications via telecommunications networks, in particular mobile phone networks or satellite-supported telecommunications networks; wireless mobile phone services; mobile telecommunications services, included in Class 38; cellular telephone communication; television and radio transmission; television and/or radio broadcasting; mobile phone television broadcasting; videoconferencing; news and information agencies within the framework of press agencies electronic mail-forwarding of messages of all kinds to internet addresses (webmessaging); computer-aided transmission of messages and images; electronic transmission of data, messages, images, documents and information relating to topics of general interest; wireless telecommunications through electronic transmission of data, sound, messages, images, information and documents via the internet; providing access to online computer databases; providing access to electronic publications on the internet; wireless telecommunications through electronic transmission of data, sound, messages, images, information and documents via the internet; providing access to information on the internet and on the mobile internet, in particular access to downloadable files, namely sound, image, music and video recordings, all the aforesaid files in particular for downloading for mobile telephones and other mobile terminals; transmission of information stored on databases, namely by means of interactive computer systems and/or by providing access to information on the internet (included in class 38); telecommunications services via the internet, intranets, extranets; procuring access to databases; providing access to a global computer network; providing access to data on computer networks, namely information, texts, drawings and images concerning goods and services; providing access to data on the internet and on the mobile internet, namely information and messages in the form of sound or images; providing access to software on data networks for internet access; providing access to information for entertainment on computer networks; providing internet chatrooms, electronic exchange of messages and information via chatlines, chatrooms and internet forums; telecommunications by means of platforms and portals on the internet providing telecommunications channels for teleshopping services; e-mail services; transmitting information and data via computer networks and the internet; leasing access time to a computer database; leasing of access time to internet games; rental or lease of access time to computer databases.

Class 41: Business education and training services; business education and training services in the field of marketing, sales, and service; publication of printed matter, books, newspapers and/or periodicals (other than for advertising purposes); publication of newspapers, periodicals and books, and of printed instructional and information material (other than for advertising purposes), in electronic form and/or on the internet; electronic desktop publishing; publication of texts, other than publicity texts; rental of printed publications; online publication of printed matter (other than for advertising purposes); editing of (mobile) websites; rental of sound recordings; digital picture service; production of television, mobile phone television and radio programs; film production, other than advertising films; conducting entertainment events, cultural events, live cultural and sporting events, training events, including in connection with applications for posting images, links, videos, text and other brand content, for retrieving, sorting, filtering and moderating user generated content and online communications, for managing brand content on social media websites and social networks, and for analyzing, retrieving and managing the performance of brand engagement; club services; coaching; correspondence courses; education information; educational examination; practical training; vocational retraining; arranging and conducting of conferences, congresses, concerts and symposiums, seminars, training courses, instructional and lecture events (cultural or educational purposes); arranging of exhibitions for cultural purposes, arranging of entertainment shows; online games services (on computer networks); conducting games (for entertainment) on the internet, including on the mobile internet; entertainment in the form of information on entertainment services via computer networks.

Class 42: Computer software development in the field of mobile applications; providing temporary use of on-line non-downloadable software development tools; technical consulting services in the field of data management, data analytics, and business intelligence analytics; technical data analytics services; software as a service (SAAS) services featuring software for providing data analytics, business analytics, business intelligence and for collecting and analyzing data; platform as a service (PaaS) software in the nature of a database for compiling data, customer data and customer interactions for enabling marketers to plan, personalize, optimize and customize communications with customers throughout the marketing, sales, and service lifecycle; platform as a service (PaaS) featuring computer software platforms for retrieving, tracking, analyzing, testing, measuring and managing data, customer data and customer interactions; platform as a service (PaaS) featuring computer software platforms for retrieving, tracking, analyzing, testing, measuring and managing data, customer data and customer interactions in the field of marketing, sales and service; platform as a service (PaaS) featuring computer software platforms for enabling marketers to plan, personalize, optimize, monitor, analyze and measure customer interactions across channels and devices; platform as a service (PaaS) featuring computer software platforms for enabling marketers to plan, personalize, optimize, monitor, analyze and measure customer interactions across social media, customer relationship management (CRM) systems, point-of-sale systems, web analytics, web posts, email and mobile devices; consulting services in the field of providing online, non-downloadable software and applications; providing temporary use of on-line non-downloadable software; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others, and consulting services related thereto; technical research; information technology consulting services; installation of computer software; computer system design and analysis; data conversion of computer programs and data; maintenance of computer software; monitoring of computer systems by remote access; rental of computer software and web servers; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer software consultancy; computer system design and analysis including for posting images, links, videos, text and other brand content, for retrieving, sorting, filtering and moderating user generated content and online communications, for managing brand content on social media websites and social networks, and for analyzing, retrieving and managing the performance of brand engagement; creating and maintaining web sites for others; data conversion of computer programs and data; maintenance of computer software; monitoring of computer systems by remote access; providing search engines for the internet; styling; technical research; web site design consultancy; consultancy in the design and development of computer hardware; digitization of documents; duplication of computer programs; information technology consulting services; installation of computer software; provision of downloadable software and/or providing temporary use of non-downloadable software for generating embeddable code for websites, for the purpose of creating, customizing, deploying, scheduling, tracking, analyzing and managing online content on users’ websites, on social media websites and other online forums, and for analyzing, monitoring and managing the performance of brand engagement of others; provision of downloadable software and/or providing temporary use of non-downloadable software for creating and deploying customized interactive content on social profiles; packaging design / packaging design services; technical project studies; quality control; recovery of computer data; rental of web servers; research and development of new products for others; server hosting; providing temporary use of non-downloadable software for monitoring of social network sites and online content for others for the purpose of monitoring, analyzing, testing, and reporting about brand content on social media websites and social networks, and about the performance of online brand engagement; hosting of computer software applications (for others); providing computer programs online; rental or lease of storage areas on servers for the internet; computer software design, computer programming, or maintenance of computer software; rental of computers; providing computer programs; designing, designing of machines, apparatus, instruments [including their parts] or systems composed of such machines, apparatus and instruments; technical advice relating to performance and operation of computers, security consultancy and security services, especially data security.

Class 45: Online social networking services for businesses and individuals via a global communications network; monitoring of social network sites and online content for others, namely, monitoring and analyzing of consumer opinions, consumer habits and the reputation of a brand amongst consumers; internet-based social networking services; online social networking services in the field of business analytics, sales and service; licensing of computer systems and software; security consultancy and security services, especially monitoring brands; online social networking services for others; registration of domain names; security consultancy.

The remaining contested goods and services are the following:

Class 9: Mechanisms for coin-operated apparatus; fire-extinguishing apparatus; fire extinguishing apparatus; monitoring apparatus, electric; mouse pads; semi-conductors; sound locating instruments; sounding lines; sounding leads; switchboxes [electricity]; switches, electric; terminals [electricity].

Contested goods in Class 9

The contested monitoring apparatus, electric are included in the broader category of the opponent’s monitoring apparatus (earlier trade marks 2 and 4). Therefore they are identical.

The contested sound locating instruments; sounding lines; sounding leads are instruments performing the function of signalling, measuring, monitoring, controlling. They are included in or overlap with the opponent’s monitoring apparatus (earlier marks 2 and 4). Therefore, they are identical.

The contested semi-conductors are similar to the opponent’s computer hardware as they usually coincide in distribution channels. The contested goods are needed in order for a computer to function. Therefore, there is a complementary character between these goods. Furthermore they target the same public.

The contested mouse pads are similar to a low degree to the opponent’s data processing apparatus (earlier mark 4) as they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The contested mechanisms for coin-operated apparatus are parts of vending machines or other machines that are activated by inserting a coin. The Opposition Division cannot find any material connection between any of the opponent’s goods in Class 9 and services in Classes 35, 38, 41, 42 and 45 of earlier trade marks 2 and 4. They differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition and are not likely to come from the same undertakings. Therefore, they are dissimilar.

The contested fire-extinguishing apparatus; fire extinguishing apparatus are dissimilar to all the opponent’s goods in Class 9 and services in Classes 35, 38, 41, 42 and 45 of the earlier trade marks 2 and 4 as they differ in nature, purpose and methods of use. They do not coincide in their producers and they have different distribution channels.

The contested switchboxes [electricity]; switches, electric; terminals [electricity] are dissimilar to all the opponent’s goods in Class 9 and services in Classes 35, 38, 41, 42 and 45 of the earlier trade marks 2 and 4. These goods and services differ in nature, purpose and method of use. They do not have the same producers, providers or distribution channels and are neither in competition, nor complementary.

Contested services in Class 42

b) Relevant public — degree of attention

In the present case, the goods and services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase, their price and terms and conditions of purchase.

c) The signs

SALESFORCE

2. EUTM No 13 497 813

Shape6

4. EUTM No 16 190 316

Shape7

Earlier trade mark

Contested sign

The relevant territory is European Union.

When an opposition is based on a European Union trade mark, as in the present case, in conducting conceptual comparisons account must be taken, in principle, of all the different meanings of the signs by the relevant public in all the official languages of the Member States.

Moreover, when assessing the similarity of the signs, an analysis of whether the differing components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these differing components have a lesser or greater capacity to indicate commercial origin. It may be easier to establish that the public may be confused about origin when the differing elements are weak or non-distinctive.

In the present case, the verbal elements of the marks under comparison ‘SALESFORCE’ and ‘DESKFORCE’ are meaningful for the English-speaking parts of the public while they are meaningless for the non-English-speaking parts of the public.

For the meanings and distinctiveness of the verbal elements ‘DESK FORCE’ of the contested sign in relation to the English-speaking part of the public, the Opposition Division refers to the explanations made in the above comparison, section c).

Part of the English-speaking public will understand the words ‘SALESFORCE’ as a whole with the meaning of ‘all the people that work for that company selling its products’ (information extracted from Collins dictionary on 15/07/2019 at https://www.collinsdictionary.com/dictionary/english/sales-force) and these words are distinctive as they do not describe or allude to any characteristics of the relevant goods and services. Another part of the English-speaking public will associate a literal meaning to each words of the earlier marks ‘SALESFORCE’ and, in particular, the meaning of the word ‘SALES’ as the plural of the English word ‘SALE’ referring to ‘the number of goods, products, or services that a company sells within a certain time period’ and the meaning of the word ‘FORCE’ as a synonym of ‘strength’. The Opposition Division, contrary to the applicant’s arguments, deems that for this part of the English-speaking public the expression ‘SALESFORCE’ is distinctive and not laudatory, allusive or descriptive in relation to the relevant goods and services.

The Opposition Division will first focus on the part of the English-speaking public that will comprehend the meaning of the separate terms that compose the expression ‘SALESFORCE’ of the earlier marks and, so for which this expression is distinctive and there is a conceptual link between the signs due to the coincidence in the meaningful word ‘FORCE’. This is the best light for the opponent in which the opposition can be examined.

The earlier trade mark 2 is a word mark consisting of the verbal element ‘SALESFORCE’. The earlier mark 4 is a figurative mark consisting of the verbal element ‘salesforce’ in white characters within a blue cloud design. As explained above the words ‘SALES’ and ‘FORCE’ have individual meanings for the relevant public. Therefore, it is reasonable to assume that the relevant public will instantly perceive the verbal element ‘SALESFORCE’ as the sum of its parts, thus splitting it into the words ‘SALES’ and ‘FORCE’, because they are both meaningful words.

The distinctiveness of the figurative element of the earlier mark 4, which is not particularly stylised, is considered low in relation to the relevant goods and services since it will be perceived by the relevant public as a mere decorative background in the shape of a cloud on which the verbal element ‘salesforce’ is depicted.

The contested sign is a figurative mark composed of the verbal element ‘deskforce’ in slightly stylised black letters. This element, for the reasons explained above in the previous section c) of the decision, will be split up in the words ‘desk’ and ‘force’ and has a normal level of distinctiveness for the relevant goods and services.

The figurative element of the contested sign (i.e. the depiction of a cloud with two curved lines on its right-hand side) has a certain level of stylisation. Moreover, it is an independent element located at the left of the verbal element ‘deskforce’. It is considered distinctive in relation to the relevant goods and services that are not IT-related as it does not describe or allude to any characteristics of the these goods and services, while it is somewhat weak in relation to the contested mouse pads as these goods are generally considered, in a broader sense, IT-related.

The marks have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘FORCE’ placed in second position in both the contested sign and the earlier marks 2 and 4. They differ in their first verbal element (i.e. ‘SALES’ of the earlier mark 2 and 4 and ‘DESK’ of the contested sign) where consumers generally tend to focus their attention. The contested sign and the earlier mark 4 also differ in the stylisation of the verbal elements. It is true that there is a depiction of a blue cloud in the earlier mark 4 and in the contested sign, but the stylisation of these clouds is different since one is a simple dark blue cloud (in the earlier mark 4) and the other is a more stylised light blue cloud depiction with two curved lines on its right side (in the contested sign). Moreover, the cloud depiction of the earlier mark 4 forms the background to the word element ‘SALESFORCE’, while the cloud depiction of the contested sign is a separated element placed before the verbal element ‘deskforce’.

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

Therefore, taking into account the differences between the signs found in their beginnings and the abovementioned facts regarding the distinctiveness of the marks’ elements, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the second word ‛FORCE’, present identically in both signs. The pronunciation differs in the sound of the first words ‛SALES’ of the earlier marks 2 and 4 and the shorter sound of the word ‘DESK’ of the contested sign.

Taking into consideration the importance of the beginnings of the two signs, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. There is a certain degree of similarity as the marks under comparison will be associated with the concept related to the common word ‘FORCE’ and to the cloud depiction (contained in the earlier mark 4 and the contested sign) but the marks differ in the meaning of their first words ‘DESK’ and ‘SALES’.

Therefore the marks are conceptually similar to an average degree.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier trade marks have a reputation and enjoy a high degree of recognition among the relevant public in relation to the areas of ‘platform as a service [PaaS]’, ‘software as a service (SaaS)’ (pages 5 and 7 of the opponent’s observations dated 23/07/2018), business software (page 28 of the opponent’s observations dated 23/07/2018) and in general to cloud-computing services in Class 42.

Firstly, the arguments and evidence regarding enhanced distinctiveness presented by the opponent in its submission dated 24/04/2019 were received after the relevant time period, which expired on 21/07/2018 (Saturday) and should be disregarded.

Secondly, the evidence submitted on 23/07/2018 (Monday), which is within the prescribed time limit, for reasons of procedural economy, does not have to be assessed at this point.

This is because the opponent’s ‘software as a service (SaaS)’, ‘platform as a service [PaaS]’ as well as ‘business software’, were found dissimilar to all the remaining contested goods and services. In the same way the ‘cloud-computing services’ in Class 42 are dissimilar to all the remaining contested goods and services as they differ in their nature, purpose, distribution channels, producers and method of use and they are neither in competition with each other or complementary to each other.

Therefore, even if the earlier marks enjoyed an enhanced distinctiveness for ‘cloud-computing services’ and /or ‘Software as a Service (SaaS)’ and/or ‘Platform as a Service [PaaS]’ the similarity of goods and services is a sine qua non condition for there to be likelihood of confusion.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element in the earlier mark 4 (the figurative element ) as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The signs are visually and aurally similar to a low degree. They are conceptually similar to an average degree. The contested goods are identical, similar to varying degrees or dissimilar to the opponent’s goods and services, the contested services are identical to the opponent’s services, the degree of attention of the relevant public varies from average to high and the inherent distinctiveness of the earlier mark is normal.

As explained in detail in section c), the Opposition Division focused its analysis on the English-speaking part of the public, which will understand the meaning of the separate terms that compose the expression of the earlier marks ‘SALESFORCE’, for which the verbal elements ‘SALES’ and ‘FORCE’ have a normal degree of distinctiveness and for which the marks are conceptually linked by the word ‘FORCE’.

Although the signs share some conceptual associations, they differ in their distinctive beginnings. Given all the factors of the case, this conceptual similarity is not sufficient to support a finding of likelihood of confusion.

The similarities between the signs mainly concern the verbal element ‘FORCE’ placed in second position within both signs under comparison, where consumers pay less attention, and the figurative elements (i.e. the depictions of a cloud), which, as explained above, differ in terms of stylisation and structure. The signs differ in their first and distinctive elements (i.e. ‘SALES’ versus ‘DESK’).

The fact that the signs coincide in the last part ‘FORCE’, cannot be sufficient for finding a likelihood of confusion, since the visual and aural differences deriving from their beginnings are clearly sufficient to outweigh any similarities between the signs. In light of the above, the marks overall create quite different impressions.

Considering all the above, even for the goods and services that are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition, as based on Article 8(1)(b) EUTMR and in relation to earlier marks 2, European Union trade mark registration No 13 497 813, and 4, European Union trade mark registration No 16 190 316, must be rejected.

This absence of a likelihood of confusion equally applies to the non-English-speaking part of the public for which the verbal elements of the marks are meaningless and to that part of the English-speaking public that will associate the entire verbal element ‘SALESFORCE’ of the earlier signs with its dictionary meaning of ‘all the people that work for that company selling its products’. In these cases, there will be no conceptual link between the verbal elements ‘SALESFORCE’ (of the earlier marks) and ‘DESKFORCE’ (of the contested sign) with the word ‘FORCE’. Therefore, the signs would not be more similar for these parts of the public than for the part of the public that would still perceive all other differences between the signs, as already explained in detail above. These parts of the public would therefore neither be likely to confuse the signs nor believe that the goods and services originated from the same or economically linked undertakings.

Remaining earlier right

As indicated above, the opponent has also based its opposition on international trade mark registration No 1 122 482 designating European Union for the word mark ‘DESK.COM’ (3.) for which the examination under Article 8(1)(b) EUTMR continues as follows.

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

a) The goods and services

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

Class 9: Downloadable computer software for use in developing and customizing computer software applications and computer software application user interfaces; computer software for storing, managing, tracking, analyzing, and reporting data in the field of marketing, promotion, sales, customer information, customer relationship management, sales support, and employee efficiency; computer software to facilitate communicating among peer professionals in the advertising, marketing, and business services fields, and for customizing computer application user interfaces.

Class 42: Providing temporary use of on-line non-downloadable software to store, manage, track, analyze, and report data in the field of marketing, promotion, sales, customer information, customer relationship management, sales support and employee efficiency; providing temporary use of on-line non-downloadable software to facilitate communicating among peer professionals in the advertising, marketing and business services fields, and for customizing computer application user interfaces; computer services, namely, designing, developing, and maintaining computer software applications for others and consulting services related thereto; providing temporary use of online non-downloadable computer software application development tools and programming language for use in developing, analyzing, coding, checking, and controlling other computer software; providing temporary use of online non-downloadable computer software that implements a procedural and object-oriented programming language; online hosted computer services, namely, designing, developing, customizing, and maintaining computer software applications for others and consulting services related thereto.

The remaining contested goods and services are the following:

Class 9: Mechanisms for coin-operated apparatus; fire-extinguishing apparatus; fire extinguishing apparatus; monitoring apparatus, electric; mouse pads; semi-conductors; sound locating instruments; sounding lines; sounding leads; switchboxes [electricity]; switches, electric; terminals [electricity].

Contested goods in Class 9

The contested mechanisms for coin-operated apparatus are parts of vending machines or other machines that are activated by inserting a coin. The Opposition Division cannot find any material connection between these goods and any of the opponent’s goods in Class 9 and services in Classes 35 and 42. The goods differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same undertakings. Therefore, they are dissimilar.

The contested fire-extinguishing apparatus; fire extinguishing apparatus are dissimilar to all the opponent’s goods and services as listed above, as they differ in nature, purpose and method of use. They do not coincide in their producers and they have different distribution channels.

The contested switchboxes [electricity]; switches, electric; terminals [electricity]; semi-conductors are dissimilar to all the opponent’s goods and services. They differ in their natures and purposes. They usually have different distribution channels, sales outlets and producers. Furthermore, they have different methods of use. They are neither in competition with nor complementary to each other.

The contested mouse pads and the opponent’s goods and services in Classes 9, 35, and 42 are deemed to be dissimilar, as they do not coincide in any of the criteria that may, alone or in combination, give rise to a degree of similarity between them. Although some of them may target the same relevant public, they differ in their purpose, nature and method of use. Moreover, they usually have different producers or distribution channels and are neither complementary nor in competition with each other.

The contested monitoring apparatus, electric; sound locating instruments; sounding lines; sounding leads are monitoring and measuring apparatus. They are dissimilar to the opponent’s goods and services. They differ in their nature and purpose, distribution channels, sales outlets, producers and method of use. They are neither in competition with each other or complementary to each other.

Contested services in Class 42

The contested industrial analysis and research services in the field of chemistry; providing information about industrial analysis and research services; industrial analysis and research services relating to automobile tires; surveying are dissimilar to all the opponent’s goods and services in Classes 9, 35 and 42. They differ in their nature and purpose. They usually have different distribution channels and producers. Furthermore, they are neither in competition with each other or complementary to each other.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the remaining contested goods and services are clearly dissimilar to the opponent’s goods and services, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition based on the international trade mark registration No 1 122 482 must be rejected.

COSTS

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

Shape8

The Opposition Division

Anna ZIOŁKOWSKA

Angela DI BLASIO

Anna BAKALARZ

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.

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