OPPOSITION No B 3 051 801

Striatum Ventures B.V., Karmozijnstraat 8, 5247 KE Rosmalen, Netherlands (opponent), represented by RISE, Frederik van Eedenplein 4, 2106 ED Heemstede, Netherlands (professional representative)

a g a i n s t

Wirecard AG, Einsteinring 35, 85609 Aschheim, Germany (applicant), represented by Pinsent Masons Germany LLP, Ottostraße 21, 80333 München, Germany (professional representative).

On 20/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 801 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 664 723 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 664 723 , namely against all the goods and services in Classes 9, 35, 38 and 42. The opposition is based on, inter alia, Benelux trade mark registration No 954 477 ‘Zupr’. 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 Benelux trade mark registration No 954 477 ‘Zupr’.

a) The goods and services

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

Class 9: Data processing equipment and computers; software; software for communicating with users of smartphones; mobile telecommunications equipment.

Class 35: Administrative services, also for the automated collection of sale data for retailers; search engine marketing.

Class 42: Design and development of computer hardware and software; providing computer hardware and software for search engines.

The contested goods and services are the following:

Class 9: Software, in particular for setting up and operating online shops; software and applications for mobile devices; downloadable mobile applications for data management and transmission; software development tools and applications for designing, editing, creating, hosting, adapting, modifying, maintaining and updating websites, the websites of others and interactive applications on a global computer network, on mobile devices and websites for social media and applications; software for use by others for adapting, designing, editing, modifying, maintaining and updating websites, the websites of others and interactive applications on a global computer network, on mobile devices and websites and applications for social media; e-commerce software for enabling electronic business transactions via a global computer network, mobile devices and websites and applications for social media; downloadable software for transaction processing, payment and billing systems, including in the form of a mobile application; computer software, namely electronic finance platforms storing various kinds of payment and debt transactions on an integrated mobile telephone, PDA and in a web-based environment.

Class 35: Provision of information and advisory services relating to e-commerce.

Class 38: Data transmission; data transmission and data broadcasting; consultancy services relating to data communications; transmission of data by electronic means; arranging access to databases on the internet; providing user access to computer programmes in data networks; access to content, websites and portals; network transmission of sounds, images, signals and data; communications services for accessing a data-base; electronic data interchange services; data transmission by electronic mail; electronic mail and mailbox services; e-mail data services; rental of electronic mail-boxes; providing on-line electronic bulletin boards for transmission of messages among computer users; providing internet chatrooms; providing on-line chat rooms for transmission of messages among computer users; telecommunication gateway services; providing access to e-commerce platforms on the internet.

Class 42: Website design; website development services; website programming; commissioned writing of computer programs, software and code for the creation of web pages on the internet; managing the web sites of others; software customisation services; computer programming and software design; writing of programs for data processing; hosting of computer sites (websites), in particular hosting of websites and e-commerce platforms on the internet; consultancy relating to the creation and design of websites for e-commerce; maintenance of software used in the field of e-commerce; software as a service (SaaS) and rental of software; software development, programming and implementation; consultancy in the field of software design; consultancy in the field of software design and website design; providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; providing temporary use of non-downloadable computer software for project management via computer networks, intranets or the internet; providing temporary use of non-downloadable computer software for handling office functions via computer networks, intranets or the internet; providing temporary use of non-downloadable software for handling payments via computer networks, intranets or the internet; provision of technical consultancy; engineering project management services; cloud computing using software for use by others to design, create, adapt, modify, edit, maintain and update websites and interactive applications on a global computer network, mobile devices and websites, the websites of others and applications for social media; computer services, namely, cloud hosting provider services.

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 terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107). However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and 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 software, in particular for setting up and operating online shops; software and applications for mobile devices; downloadable mobile applications for data management and transmission; software development tools and applications for designing, editing, creating, hosting, adapting, modifying, maintaining and updating websites, the websites of others and interactive applications on a global computer network, on mobile devices and websites for social media and applications; software for use by others for adapting, designing, editing, modifying, maintaining and updating websites, the websites of others and interactive applications on a global computer network, on mobile devices and websites and applications for social media; e-commerce software for enabling electronic business transactions via a global computer network, mobile devices and websites and applications for social media; downloadable software for transaction processing, payment and billing systems, including in the form of a mobile application; computer software, namely electronic finance platforms storing various kinds of payment and debt transactions on an integrated mobile telephone, PDA and in a web-based environment are included in the broad category of the opponent’s software. Therefore, they are identical.

Contested services in Class 35

The contested provision of information and advisory services relating to e-commerce are similar to the opponent’s administrative services, also for the automated collection of sale data for retailers because these services have the same purpose, namely to help companies with the performance of business operations. Consequently, they may have the same providers, distribution channels and target the same public.

Contested services in Class 38

The contested data transmission; data transmission and data broadcasting; consultancy services relating to data communications; transmission of data by electronic means; arranging access to databases on the internet; providing user access to computer programmes in data networks; access to content, websites and portals; network transmission of sounds, images, signals and data; communications services for accessing a data-base; electronic data interchange services; data transmission by electronic mail; electronic mail and mailbox services; e-mail data services; rental of electronic mail-boxes; providing on-line electronic bulletin boards for transmission of messages among computer users; providing internet chatrooms; providing on-line chat rooms for transmission of messages among computer users; telecommunication gateway services; providing access to e-commerce platforms on the internet are similar to the opponent’s data processing equipment and computers in Class 9.

The contested services are, in a broad sense, telecommunication services that allow people to access or transmit data, as well as to communicate with one another by remote means. The opponent’s data processing equipment and computers are devices that process data, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. This kind of equipment is, or can be, absolutely necessary for performing the services in question and, from the viewpoint of the consumer, it is indispensable for accessing and transmitting data, or communicating with others when using the contested services. Therefore, there is a link between the opponent’s goods in Class 9 and the contested services in Class 38. They are similar because they are complementary and, even though their nature is different, their purposes, distribution channels and relevant consumers are the same.

Contested services in Class 42

The contested website design; website development services; website programming; commissioned writing of computer programs, software and code for the creation of web pages on the Internet; software customisation services; writing of programs for data processing; computer programming and software design; maintenance of software used in the field of e-commerce; software as a service (SaaS) and rental of software; software development, programming and implementation; cloud computing using software for use by others to design, create, adapt, modify, edit, maintain and update websites and interactive applications on a global computer network, mobile devices and websites, the websites of others and applications for social media are included in, or overlap with, the opponent’s design and development of computer hardware and software. Therefore, they are identical.

The contested managing the web sites of others; hosting of computer sites (websites), in particular hosting of websites and e-commerce platforms on the internet; consultancy relating to the creation and design of websites for e-commerce; consultancy in the field of software design; consultancy in the field of software design and website design; providing temporary use of non-downloadable computer software for shipment processing over computer networks, intranets and the internet; providing temporary use of non-downloadable computer software for project management via computer networks, intranets or the internet; providing temporary use of non-downloadable computer software for handling office functions via computer networks, intranets or the internet; providing temporary use of non-downloadable software for handling payments via computer networks, intranets or the internet; provision of technical consultancy; engineering project management services; computer services, namely, cloud hosting provider services are similar to the opponent’s design and development of computer hardware and software as they may coincide in providers with the same technical know‑how, their distribution channels and relevant consumers.

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 are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average depending on the specialised nature of the goods and services, the frequency of their purchase and their price.

c) The signs

Zupr
Earlier trade mark	Contested sign

The relevant territory is the Benelux: Belgium, Luxembourg and the Netherlands. The official languages are Dutch, French and German.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The earlier mark is a word mark ‘Zupr’. 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). Therefore, it is irrelevant whether the word mark is depicted in lower- or upper-case letters, or a mixture of the two.

The contested sign is a figurative mark consisting of a verbal element ‘SUPR’, depicted in standard bold upper-case letters, below which is a much smaller verbal element ‘by wirecard’, depicted in standard lower-case letters. Both elements are placed against a dark rectangle background.

The words ‘Zupr’ of the earlier mark and ‘SUPR’ of the contested sign are meaningless for the public in the relevant territory and, therefore, each of them has an average degree of distinctiveness. Bearing in mind the applicant’s name and the fact that the English expression formed by the preposition ‘by’ followed by a company name is commonly used in trade sectors to indicate the manufacturer or service provider, the expression ‘by wirecard’ will be understood by the relevant public as an indication that the goods and services concerned originate from the applicant. As this expression does not directly describe or allude to any characteristics of the goods and services in question, it has an average degree of distinctiveness. However, considering its small size and clearly subordinate position, the much bigger verbal element ‘SUPR’ will be the first element that catches the consumers’ attention and, therefore, is the dominant element of the contested sign. The dark rectangle merely serves as a background and will not be attributed any trade mark significance by the relevant consumers.

Visually, the signs coincide in the sequence of letters ‘*UPR’, which constitute three letters out of four in the earlier mark, and in the dominant element of the contested sign. The signs differ in the first letters of these verbal elements, namely ‘Z’ in the earlier mark and ‘S’ in the contested sign, as well as in the verbal element ‘by wirecard’, the stylisation and the rectangle background of the contested sign.

Although, as pointed out by the applicant, the abovementioned differences between the earlier mark and the contested sign will be noticed by the relevant consumers, considering the secondary position of the verbal element ‘by wirecard’ and the decorative nature of the rectangle background, these elements together with the differing first letters ‘S’ and ‘Z’, will not outweigh the similarities created by the fact that the only dominant element of the contested sign reproduces three letters out of four of the earlier mark. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛*UPR’, present identically in both signs. The pronunciation differs only slightly in the sound of the first letters ‘Z’ and ‘S’ of the verbal elements ‘Zupr’ and ‘Supr’ of the earlier mark and the contested sign respectively, and in the sound of the additional verbal element ‘by wirecard’ of the contested sign, if this element is pronounced at all by the relevant consumers (considering its non-dominant nature and the fact that it will be seen as a reference to the applicant, as explained above).

The applicant focuses its arguments on the assumption that the dominant verbal element of the contested sign, ‘SUPR’, will be perceived and pronounced as ‘SUPER’ by the relevant public. However, the applicant did not submit any evidence to support its claim, except references to the judgments 12/06/2007, T-339/05, LOKTHREAD, EU:T:2007:172; 17/03/2004, T-183/02 and T-184/02, MUNDICOR, EU:T:2004:79 and 30/06/2004, T-186/02, DIESELIT, EU:T:2004:197, which, taking into account the different factual circumstances, are not comparable to the present case. It is also worth recalling that when assessing a likelihood of confusion under Article 8(1)(b) EUTMR, the marks must be compared on the basis of how they are registered or applied for (15/04/2010, T-488/07, Eglefruit, EU:T:2010:145, § 35).

Considering all the above and taking into account that, contrary to the applicant’s assertions, the first letters ‘Z’ and ‘S’ of the earlier mark and the dominant element of the contested sign will be pronounced in a very similar way by the relevant public, the signs are aurally similar to a high degree.

Conceptually, neither the earlier mark, nor (contrary to the applicant’s statement) the contested sign has a meaning for the public in the relevant territory. Therefore, the conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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, 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

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 goods and services are partly identical and partly similar to the opponent’s goods and services. They target the public at large and business customers, and the degree of attention may vary from average to higher than average. The distinctiveness of the earlier marks is normal.

As detailed in section c), the earlier mark and the contested sign are visually similar to an average degree, aurally highly similar, and the conceptual aspect does not influence the assessment of similarity between the signs. The dominant element of the contested sign reproduces almost the entire verbal element of the earlier mark, with the exception of its first letter. However, this difference is aurally minor, as both these elements will be pronounced in practically the same way. Since the element ‘SUPR’ is the dominant element of the contested sign and the element ‘by wirecard’ is clearly subordinate and, moreover, is likely to be perceived as a reference to the applicant, consumers will focus more on the element that would be seen as identifying the specific product line, namely ‘SUPR’.

Considering all the above and the fact that neither of the signs conveys any concept that could clearly differentiate them from each other, it is highly conceivable that the relevant consumers, relying on their imperfect recollection, will be led to believe that the goods and services in question come from the same undertaking or, as the case may be, from economically linked undertakings.

Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the public and the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 954 477 ‘Zupr’. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier Benelux trade mark registration No 954 477 ‘Zupr’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Cynthia DEN DEKKER

Rasa BARAKAUSKIENE

Claudia ATTINÀ

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.