OPPOSITION No B 3 041 947

Westfalia Logistics Solutions Europe GmbH & Co. KG, Industriestraße 11, 33829, Borgholzhausen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209, Bremen, Germany (professional representative)

a g a i n s t

Zebra Technologies Corporation, 3 Overlook Point, 60069 Lincolnshire, United States (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).

On 17/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 041 947 is upheld for all the contested services.

2. European Union trade mark application No 17 593 419 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 593 419, for the word mark ‘SAVANNA’. The opposition is based on, inter alia, German trade mark registration No 302 017 015 439 for the word mark ‘Savanna.NET’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

Proof of use of two of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed on the basis of German trade mark registration No 302 017 015 439, which is not subject to proof of use.

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

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

1. The goods and services

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

Class 42: Technical development of logistical warehouse and sort systems; planning and development of computer software for logistical systems, particularly of logistical warehouse and sort systems.

The contested services are the following (after limitation):

Class 42: Platform as a service (PAAS) featuring computer software platforms for computer application and mobile application development.

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

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

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

The contested platform as a service (PAAS) featuring computer software platforms for computer application and mobile application development is at least similar to the opponent’s planning and development of computer software for logistical systems, particularly of logistical warehouse and sort systems. Platform as a service is a cloud computing model in which a third-party provider delivers hardware and software tools — usually those needed for application development — to users over the internet. Software planning and development is the process of conceiving, specifying, designing, programming, documenting, testing, and bug fixing involved in creating and maintaining applications, frameworks, or other software components. Contrary to the applicant’s argument, the Opposition Division is of the opinion that the software can be used on a platform as a service (PAAS) featuring computer software platforms. These services have the same nature, are provided by the same undertakings, are distributed through the same channels and target the same relevant public. Furthermore, they are complementary to each other.

2. Relevant public — degree of attention

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

In the present case, the services of the earlier mark target the professional public exclusively and the contested services target both the general public and professionals. 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 public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the services purchased.

3. The signs

Savanna.NET	SAVANNA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 signs in question are both word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is presented in upper or lower case characters, or in a combination thereof. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43).

The signs under comparison consist of the word ‘savanna’ and the earlier mark additionally contains the word element ‘.NET’.

The word ‘savanna’ will be understood by the relevant public as ‘a grassy plain in tropical and subtropical regions, with few trees’ because it is very similar to the German word ‘Savanne’ with the same meaning. As it is neither descriptive, nor allusive for the services at issue, this word is distinctive for these services.

With regard to the word element ‘.NET’, the Opposition Division is of the opinion that the public in question will associate it with the top level domain ‘.net’ because the domain ‘.net’ is used worldwide. In the light of the foregoing, the component ‘.NET’ must be considered descriptive of the services covered, insofar as it has a sufficiently direct and specific link to them to enable the relevant public to immediately perceive, without further thought, a description of one of the essential characteristics of the services, namely that the services are provided through the internet on a webpage with a .net domain name (14/11/2017, T‑129/16, EU:T:2017:800, claranet (fig.) / CLARO et al., § 42). Therefore, this element is non-distinctive.

Visually and aurally, the signs coincide in the distinctive word ‘SAVANNA’. However, they differ in the non-distinctive word element ‘.NET’ of the earlier mark.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the distinctive element ‘SAVANNA’ while the additional element in the earlier mark is non-distinctive, the signs are at least conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

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.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As concluded above, the contested services are at least similar to the opponent’s services. The signs are visually, aurally and conceptually highly similar. Furthermore, the earlier mark has a normal degree of distinctiveness. Considering that the public in question includes professionals, and that their degree of attention will vary from average to high, the signs could be confused with each other.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). With regard to the contested services it should be noted that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The signs coincide in the same distinctive word element ‘savanna’ and differ in the non-distinctive word component ‘.NET’ of the earlier mark. This is not sufficient to counteract the significant similarity between them and, therefore, there is a serious risk that the relevant public will confuse them and believe that they come from the same undertaking or from economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 017 015 439. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Michal KRUK

Klaudia MISZTAL

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.