OPPOSITION No B 3 050 963

Matters, 10 rue du Faubourg Poissonnière, 75010 Paris, France (opponent), represented by Cabinet Beau de Lomenie, 158, rue de L’Université, 75340 Paris Cédex 07, France (professional representative)

a g a i n s t

Cintelli Limited, 11 Laurel Lane, BH24 2LR St. Leonards, United Kingdom (applicant), represented by Trade Mark Direct, 4 The Mews, Bridge Road, Twickenham, London Richmond upon Thames TW1 1RF, United Kingdom (professional representative).

On 21/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 963 is partially upheld, namely for the following contested services:

Class 42: Software as a service [SaaS] and providing temporary use of on-line non-downloadable software, namely packaged software solution, for business and project management and online time recording for legal firms and legal service providers.

2. European Union trade mark application No 17 569 203 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 569 203 for the word mark ‘matters.Cloud’, namely against all the services in Classes 42 and 45. The opposition is based on French trade mark registration No 4 280 993 for the word mark ‘MATTERS’. 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 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, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The services

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

Class 42: Design and development of computer hardware and software; IT services; software development, programming and implementation; hosting services and software as a service and rental of software; IT consultancy, advisory and information services; IT security, protection and restoration; data duplication and conversion services, data coding services; design, creation, hosting and maintenance of websites; computer system analysis; analysis for the setting up of computer system; technical project studies in the field of data processing; conversion and digitalisation of documents and data into electronic form; hosting of computer data; design and development of computer programs and software, notably for use in electronic archiving; development (design), installation, maintenance, updating, enhancing or rental of computer software, notably for use in electronic archiving; development of systems for the storage of data; computer programming; conversion of data and computer programs for use in electronic archiving; conversion of data or documents from physical to electronic media; software research and development; scientific and industrial research, notably in the field of computing, namely technical research; research and development of new products in the field of information technology; design, development and maintenance of computing tools and systems for updating of databases; consultancy in the field of computing; technical consultancy services relating to information technology; design (development) of computer goods, namely computer programs and software; computer system design; cloud computing; rental of software enabling access to a cloud computing network and the use thereof; leasing of access time to a computer data base server centre; design, setup, maintenance and hosting of websites; computer system installation analysis; computer rental; computer security to prevent piracy and data deterioration; computer services, namely assessment, analysis, testing and rating the performance of computer hardware; reconstruction of databases; research and/or development, design, and consultancy, relating to computer hardware, software and telecommunication networks; expert services, namely technical testing of computer hardware and software and telecommunications networks; programming, development and engineering in the field of computing; programming of operating software for accessing and using a cloud computing network; monitoring of data, signals and information processed by computers or by telecommunications apparatus and instruments; creation and installation of computer databases; software technical assistance.

The contested services, after the applicant’s restrictions filed on 26/04/2018, are the following:

Class 42: Software as a service [SaaS] and providing temporary use of on-line non-downloadable software, namely packaged software solution, for business and project management and online time recording for legal firms and legal service providers.

Class 45: Online legal services; online legal administrative services; information, advice and consultancy in relation to all the aforesaid services.

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

The term ‘namely’, used in the applicant’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.

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

Contested services in Class 42

The contested software as a service [SaaS] and providing temporary use of on-line non-downloadable software, namely packaged software solution, for business and project management and online time recording for legal firms and legal service providers are included in the broad category of the opponent’s software as a service. Therefore, they are identical.

The applicant focuses its arguments on the different functionality of the services. However, even if the service provider’s main task and function is the internal management of legal firms it is still a software service. Therefore, it is included in software as a service and is identical to the opponent’s services.

Contested services in Class 45

The contested online legal services; online legal administrative services; information, advice and consultancy in relation to all the aforesaid services are dissimilar to the opponent’s services in Class 42, because:

- The services are not offered together through the same distribution channels or by the same providers, because the opponent’s services would be rendered by an IT firm and the applicant’s by a law firm. The opponent argues that the services of the prior sign include cloud computing networks in the field of legal services, however, the legal services are not included in Class 42, but in Class 45.

- The relevant public is different. When someone is looking for IT services, they will not be searching for a legal service provider and vice versa.

- By definition, services intended for different publics cannot be complementary (22/06/2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T‑361/11, Dolphin, EU:T:2012:377, § 48). The opponent argues that the services are complementary; however, if the publics are different, the services cannot be complementary. The fact that the legal services are provided online is not sufficient to render them similar to software as a service or IT services.

- The services cannot be held to be in competition either, as they cannot be substituted with one another.

These arguments sustain the conclusion that the services are dissimilar.

b) Relevant public — degree of attention

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

In the present case, the services of the earlier mark target the general and professional public and the contested services target the professional public exclusively (i.e. business and project management professionals and legal firms and legal service providers). Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81).

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

c) The signs

MATTERS	matters.Cloud
Earlier trade mark	Contested sign

The relevant territory is France.

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 common element of the signs ‘MATTERS’ is an English word referring to ‘the situation in question’ (as correctly pointed out by the applicant). However, it is not a basic English term and the Opposition Division is of the view that a significant part of the relevant public will see this element as meaningless and, hence, normally distinctive, since, according to case-law, the understanding of a foreign language may not, in general be presumed (26/01/2016, T‑202/14, LR nova Pure. / NOVA, EU:T:2016:28, § 47). The above conclusion is not called into question by the evidence submitted by the applicant because it consists of a Wikipedia definition of ‘legal matter management’, a definition of ‘matters’ from the Collins Dictionary and screenshots of the websites of both parties and neither demonstrates that the relevant public knows the meaning of the word nor that it has been widely exposed to the use thereof in relation to the relevant services. However, considering that the relevant public is professionals in business-related fields or legal services providers, it may not be excluded that a part of the public with a command of English will understand this word. In such a case, although it may not be held that ‘MATTERS’ will be seen as descriptive and non-distinctive for the relevant services, an allusion to the subject matter of the relevant services may be seen so that the distinctiveness of this word will be somewhat limited.

The second element of the contested sign ‘Cloud’ is widely used and will be perceived by the majority of the relevant professional public, as a reference to cloud computing, that is, the ability to store and access data and programs over the internet instead of using a computer’s hard drive. Moreover, the element ‘.cloud’ is a top-level domain (TLD) and top-level domain codes are also often used in trade marks and only indicate the place where information can be found on the internet and are technical and generic elements, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, they may also indicate that the goods and services covered by the trade mark can be obtained or viewed online, or are internet related (21/11/2012, T‑338/11, PHOTOS.COM, EU:T:2012:614, § 22). Consequently, the second element ‘Cloud’ in the contested sign will barely (if at all) be attributed trade mark significance and is less similar than the first element ‘MATTERS’.

Visually and aurally, the signs coincide in the word and pronunciation of the word ‘MATTERS’, present identically in both signs and considered to be the most distinctive element in the contested sign.

They differ in the elements ‘.’ and ‘Cloud’ in the contested sign, which has no counterpart in the earlier sign and would be pronounced as ‘dot cloud’ as stated by the applicant. However, as this is considered to be an element of limited (if any) distinctiveness, it has little impact on the visual and aural comparison of the signs.

Moreover, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In this case, the element ‘MATTERS’ constitutes the entire earlier mark and the first element of the contested sign.

Therefore, the signs are similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public, for which ‘MATTERS’ will be associated with a meaning, the signs are similar to at least an average degree. For the part of the public, for which only the element ‘Cloud’ will be associated with a meaning, the signs are not conceptually similar.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, for the part of the public, for which the earlier mark will not be associated with a meaning, the distinctiveness of the earlier mark must be seen as normal. For the part of the public which would understand the word ‘MATTERS’, the distinctiveness of the earlier mark must be seen as slightly lower than average, as explained in the previous section c).

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In word marks, the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that, in general, the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, TRUBION/TriBion Harmonis(fig.), EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

Based on the interdependence between the factors, and taking into account that the signs are visually and aurally similar to at least an average degree and have identical services in Class 42, the Opposition Division considers that there is a likelihood of confusion between the signs as the entire earlier mark is reproduced at the beginning of the contested sign, which forms its most distinctive element.

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

The Opposition Division is of the view that a likelihood of confusion also cannot be excluded from the perspective of the part of the public for which the coinciding element and the earlier mark as a whole would be of somewhat limited distinctiveness. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor, inter alia, involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61; 13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70). This is the situation, in view of the higher than average degree of visual and aural similarity between the conflicting marks (which, in such case, would be reinforced by a conceptual similarity) and the identity of the services at issue.

In its observations, the applicant argues that the opponent does not have the monopoly on marks which include the element ‘MATTERS’. In support of its argument the applicant refers to several trade mark registrations in the European Union and the United Kingdom.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘MATTERS’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, the applicant denies that the registration of the contested mark is contrary to Article 8(5) EUTMR, however, the opponent only based the opposition on Article 8(1)(b) EUTMR. Therefore, the Opposition Division will not review and decide the opposition on the base of Article 8(5) EUTMR.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 4 280 993 for the word mark ‘MATTERS’. There is also likelihood of confusion on the part of the public with a high level of attention due to the similarities of the marks. It follows that the contested trade mark must be rejected for the contested services in Class 42.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at the services in Class 45 cannot be successful.

COSTS

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

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

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Astrid Victoria WÄBER

Martin EBERL

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.