OPPOSITION Nо B 3 057 479

 

Spanish Oncology Genitourinary Group, C/Velázquez nº 7, planta 3, 28001 Madrid, Spain (opponent), represented by Ponti & Partners, S.L.P., C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

 

a g a i n s t

 

Beijing Sogou Technology Development Co., Ltd., Level 9, Sohu.com Internet Plz, No. 1 Unit Zhongguancun East Road, Haidian District, 100084 Beijing, People’s Republic of China (applicant), represented by Prinz & Partner mbB Patent- und Rechtsanwälte, Rundfunkplatz 2, 80335 München, Germany (professional representative).

On 10/06/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 057 479 is partially upheld, namely for the following contested services:

 

Class 41: Arranging and conducting business seminars in the field of banking, finance, investment, stock/securities market, insurance, real estate; arranging and conducting conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; bookmobile services; arranging and conducting business training in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; education services, namely, providing online classes, seminars, workshops in the fields of sports, general interest; layout services other than for advertising purposes; providing on-line publications in the nature of books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; all of the aforesaid services not in the field of medicine, scientific research and health. Class 42: Technical research; all of the aforesaid services not in the field of medicine, scientific research and health.

2.	European Union trade mark application No 17 690 223 is rejected for all the above services. It may proceed for the remaining services.

3.	Each party bears its own costs.

REASONS

On 05/07/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 690 223, (figurative mark). The opposition is based on, inter alia,  European Union trade mark registration No 16 161 036, ‘SOGUG’ (word mark). The opponent invoked  Article 8(1)(b) EUTMR.

 

PRELIMINARY REMARK CONCERNING THE CONTESTED GOODS AND SERVICES (EARLIER OPPOSITIONS B 3 050 951 AND B 3 050 975 AND LIMITATION OF THE SPECIFICATION).

The Opposition Division issued two decisions in parallel cases B 3 050 951 and B 3 050 975 against the same European Union trade mark application. On 18/12/2019, in the first of the aforesaid cases, B 3 050 951, the Opposition Division refused protection in relation to all the goods in Class 9. In B 3 050 975, on 30/04/2020, the Opposition Division upheld the opposition partly, namely with regard to advisory services relating to business management and business operations; business appraisals; business investigations; compiling and analysing statistics, data and other sources of information for business purposes; personnel recruitment; providing business information via a web site; systemization of information into computer databases; all of the aforesaid services not in the field of medicine, scientific research and health in Class 35. These decisions have become final and, therefore, European Union trade mark application No 17 690 223 is refused protection already in relation to these goods and services.

In addition, the applicant had filed a limitation of the goods and services on 17/05/2019.

Therefore, this opposition will proceed against the remaining services not affected by the limitation or the earlier decisions in parallel oppositions.

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 European Union trade mark registration No 16 161 036.

a) The services

 

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

Class 41: Providing of training and teaching in the field of medicine and health; arranging of symposiums in the field of medicine, medical research and health; publication of magazines, books, manuals and texts in the field of medicine and health; arranging and conducting of seminars and conventions in the field of medicine and health; conducting educational support programs for patients.

Class 42: Medical and pharmacological research services, scientific research for medical purposes; medical laboratory services; providing scientific information in the field of medical disorders and their treatment; conducting and evaluation of clinical trials; providing information about the results of clinical trials for pharmaceutical products.

Class 44: Medical services; medical services in the field of oncology; providing on-line information relating to oncology; providing medical support in the monitoring of patients receiving medical treatments; monitoring of patients.

The contested services, further to a limitation filed by the applicant on 17/05/2019 and the aforesaid decisions in cases B 3 050 951 and B 3 050 975, are the following:

Class 35: Advertising services; search engine optimization; on-line advertising on a computer network; sponsorship search; all of the aforesaid services not in the field of medicine, scientific research and health.

Class 38: Broadcast of cable television programmes; electronic message sending; communications by computer terminals; electronic, electric, and digital transmission of voice, data, images, signals, and messages; electronic mail services; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing telecommunications connections to a global computer network; providing multiple-user access to a global computer information network; providing internet chatrooms; voice mail services; all of the aforesaid services not in the field of medicine, scientific research and health.

Class 41: Arranging and conducting business seminars in the field of banking, finance, investment, stock/securities market, insurance, real estate; arranging and conducting conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; arranging, organizing, conducting, and hosting social entertainment events; bookmobile services; arranging and conducting business training in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; education services, namely, providing online classes, seminars, workshops in the fields of sports, general interest; layout services other than for advertising purposes; production of radio and television programs; providing on-line publications in the nature of books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; providing on-line music and entertainment information; all of the aforesaid services not in the field of medicine, scientific research and health.

Class 42: Technical research; research, development, design and upgrading of computer software; computer services, namely, providing search engines for obtaining data on a global computer network; computer programming; computer software design for others; maintenance of computer software; computer systems analysis; design and development of on-line computer software systems; duplication of computer programs; conversion of data or documents from physical to electronic media; creating or maintaining web sites for others; web site hosting services; all of the aforesaid services not in the field of medicine, scientific research and health. 

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 goods and 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.

The opponent’s services concern training and teaching, including organization of symposiums, seminars and conventions as well as publication of magazines, books, manuals and texts (Class 41), scientific, research and laboratory services (Class 42) and medical services, including support and monitoring of patients (Class 44). They all are related to medicine and health by addition of the phrase ‘in the field of medicine and health’, by reference to patients or by use of the word ‘medical’.

It should be also explained that the phrase ‘all of the aforesaid services not in the field of medicine, scientific research and health’ added by the applicant is a limitation excluding from protection services relating to the field of medicine, scientific research and health. However, contrary to the applicant´s claim, this limitation does not automatically and per se exclude any similarity between the services in conflict.

Contested services in Class 35

The contested advertising services; search engine optimization; on-line advertising on a computer network; sponsorship search; all of the aforesaid services not in the field of medicine, scientific research and health are dissimilar to the opponent’s services in Classes 41, 42 and 44 as they have no factors in common. The contested services are advertising services and services related thereto. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. As indicated by the applicant, its services are not in the field of medicine, scientific research and health. They differ not only in their nature and purpose, but also in their distribution channels, providers and method of use. Furthermore, they are neither in competition nor complementary.

Contested services in Class 38

The contested broadcast of cable television programmes; electronic message sending; communications by computer terminals; electronic, electric, and digital transmission of voice, data, images, signals, and messages; electronic mail services; providing on-line chat rooms and electronic bulletin boards for transmission of messages among users in the field of general interest; providing telecommunications connections to a global computer network; providing multiple-user access to a global computer information network; providing internet chatrooms; voice mail services; all of the aforesaid services not in the field of medicine, scientific research and health are all related to telecommunications, including television broadcasting and various types of communication (with use of modern technologies). As indicated in the specification these services are not in the field of medicine, scientific research and health. Telecommunications, being a broad term, is the transmission of information by various types of technologies over wire, radio, optical or other electromagnetic systems. It has its origin in the desire of humans for communication over a distance greater than that feasible with the human voice, but with a similar scale of expediency; thus, slow systems (such as postal mail) are excluded from the field. The contested services and the opponent’s services differ not only in their nature and purpose, but also in their distribution channels, providers and method of use. Furthermore, they are neither in competition nor complementary. Consequently, the contested services are dissimilar to the opponent’s services in Classes 41, 42 and 44 as they have nothing in common.

Contested services in Class 41

The contested layout services other than for advertising purposes; all of the aforesaid services not in the field of medicine, scientific research and health are similar to the opponent’s publication of magazines, books, manuals and texts in the field of medicine and health. Although the subject of these services is different as the contested services are not in the field of medicine, scientific research and health, whereas the opponent’s services are in the field of medicine and health, the services in question are related to publishing services. They have the same purpose and usually coincide in their distribution channels, providers, method of use and relevant public.

The contested arranging and conducting business seminars in the field of banking, finance, investment, stock/securities market, insurance, real estate; arranging and conducting conferences in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; arranging and conducting business training in the field of banking, finance, investment, stock market, securities market, insurance, real estate and sports; education services, namely, providing online classes, seminars, workshops in the fields of sports, general interest; all of the aforesaid services not in the field of medicine, scientific research and health are similar to the opponent’s arranging and conducting of seminars and conventions in the field of medicine and health. They coincide not only in their nature and purpose, but also in distribution channels, providers and method of use. Although the subject of these services is different as the contested services are not in the field of medicine, scientific research and health, whereas the opponent’s services are in the field of medicine and health, the services in question are related to education.

The contested bookmobile services; providing on-line publications in the nature of books, magazines, brochures, journals, periodicals in the field of banking, finance, investment, stock market, securities market, insurance and real estate; all of the aforesaid services not in the field of medicine, scientific research and health are services allowing easy access to books, magazines, brochures, journals, periodicals. Its main aim is to share knowledge and provide a forum for exchange. They have some points in common with the opponent’s conducting educational support programs for patients which aim to educate people, inter alia, through reading. The services concerned have the same purpose. They usually coincide in provider, relevant public and distribution channels. Furthermore, they can be complementary. Consequently, they are similar.

The contested arranging, organizing, conducting, and hosting social entertainment events; providing on-line music and entertainment information; production of radio and television programs; all of the aforesaid services not in the field of medicine, scientific research and health are dissimilar to the opponent’s services in Classes 41, 42 and 44 as they have no points of contact. Arranging, organizing, conducting, and hosting social entertainment events and providing on-line music and entertainment information are various types of entertainment and provision of information related thereto. Entertainment is a form of activity that holds the attention and interest of an audience or gives pleasure and delight. It can be an idea or a task, but is more likely to be one of the activities or events that have developed over thousands of years specifically for the purpose of keeping an audience's attention (e.g. movies, music, etc.). Production of radio and television programs is a complex activity aiming to prepare a radio or a television program (indirectly related to entertainment). As indicated by the applicant its services are not in the field of medicine, scientific research and health. The services in conflict differ not only in their nature and purpose, but also in their distribution channels, providers and method of use. Furthermore, they are neither in competition nor complementary.

Contested services in Class 42

The contested technical research; all of the aforesaid services not in the field of medicine, scientific research and health are similar to the opponent’s medical and pharmacological research services. Nowadays technical research is used also in the field of medicine with the aim to create new developments in medical technology. Although the applicant has specifically excluded the fields of medicine, scientific research and health, the services are related, since technical research concerns for example biotechnology or chemistry and its results can be applied in the field of medicine or pharmacy. The services concerned have the same broad purpose. They usually coincide in relevant public and distribution channels. Furthermore, they can be complementary.

The contested research, development, design and upgrading of computer software; computer services, namely, providing search engines for obtaining data on a global computer network; computer programming; computer software design for others; maintenance of computer software; computer systems analysis; design and development of on-line computer software systems; duplication of computer programs; conversion of data or documents from physical to electronic media; creating or maintaining web sites for others; web site hosting services; all of the aforesaid services not in the field of medicine, scientific research and health are various services in the field of IT. The fact that IT services can be used to carry out the opponent’s services does not mean necessarily that they are similar as IT services are used in various fields of business and private activities. Therefore, the contested services and the opponent’s services differ not only in their nature and purpose, but also in their distribution channels, providers and method of use. Furthermore, they are neither in competition nor complementary. Consequently, the contested services are dissimilar to the opponent’s services in Classes 41, 42 and 44 as they have nothing in common.

 

b) Relevant public — degree of attention

  

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

  

In the present case, the services found to be similar are directed at the public at large (e.g. bookmobile services; all of the aforesaid services not in the field of medicine, scientific research and health) and/or at business customers with specific professional knowledge or expertise (e.g. layout services other than for advertising purposes; all of the aforesaid services not in the field of medicine, scientific research and health).

 

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

c) The signs

 

SOGUG
Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

 

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

 

The earlier mark is a word sign consisting of the verbal element ‘SOGUG’, whereas the contested sign is a figurative sign composed of the verbal element ‘Sogou’ and some characters resembling Asian script.

Regarding the earlier mark, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the signs are represented in upper- or lower-case characters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), which is not the case here.

As such the verbal element of the earlier mark ‘SOGUG’ has no meaning for the relevant public and is, therefore, distinctive.

The verbal element of the contested sign ‘Sogou’ has as such no meaning for the relevant public and is, therefore, distinctive.

The contested mark also contains Asian characters. Even if it cannot be disputed that the population of the European Union includes people of Asian ancestry, it is questionable whether such population can be considered a substantial part of the consumers in the European Union (21/03/2017, R 888/2016-2 - 'Authentic herbal tea’, § 32; 06/02/2013, R 1971/2011-2 - 'Dr Jian’ (fig.) / ‘Jianchi’ et al., § 31). The general public in the European Union will perceive the Asian characters as mere calligraphic and abstract signs, but will not be able to detect any meaning (03/05/2011, R 2000/2010-4 - ‘FORERUNNER’ / ‘FORERUNNER’, § 15; 12/07/2012, T-517/10, Hypochol, EU:T:2012:372, § 28; 04/09/2017, R 1780/2016 - Device of Chinese character (fig.), § 39; 06/08/2019, R 2310/2018-4 - Chinese characters, § 24). This script as such is illegible for the relevant public in the European Union and consumers will neither be able to pronounce it nor to memorize it as a word (06/08/2019, R 2310/2018-4 - Chinese characters, § 25). Although the relevant public is likely to perceive the Asian characters as what they are, namely as Asian characters, these do not allow the relevant public to perceive them as a badge of origin for the aforementioned reasons. As a consequence the Asian characters have a weak distinctiveness.

The stylisation of the letters in the contested sign is rather slight and plays a marginal role in the comparison. The contested sign has no element that could be considered clearly more dominant than other elements.

Furthermore, 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). Accordingly, it is relevant to note that in the present case the main coincidences are found in the verbal elements, and therefore in the part of the signs causing stronger impact, as it will be explained in detail in the comparison below.

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. It is therefore relevant to note that in the present case the coincidences between the marks are found at the beginning of the contested sign, as it is explained in detail below.

Visually, the signs coincide in the string of letters ‘SOG**’/’Sog**’. It should be underlined that the letter ‘U’/’u’ appears as the fourth letter of the earlier mark and the fifth letter of the contested sign. The signs differ slightly in their endings, namely the letters ‘***UG’ of the earlier mark and ‘***ou’ of the contested sign. Furthermore, they differ in the figurative device resembling Asian script in the contested sign as well as the stylisation of its letters.

Therefore, and upon taking into account the above considerations on the distinctiveness and impact of the elements of the signs, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SOG**’/’Sog**, present identically in both signs. The pronunciation differs in the sound of their last letters, that is, ‘***UG’ of the earlier mark and ‘***ou’ of the contested sign. It should be underlined that the letter ‘U’/’u’ appears as the fourth letter of the earlier mark and the fifth letter of the contested sign. Furthermore, the last two letters in the contested sign can be pronounced in some languages of the EU as a single phonetic sound.

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

Conceptually, the signs cannot be compared as the words ‘SOGUG’ and ‘Sogou’ have no meaning for the relevant public. The Asian characters will not be associated with any particular meaning other than an indication of Asian script. Therefore, although the public in the relevant territory will perceive the concept of the latter element of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. The impact of this conceptual difference is however limited since the Asian characters have a weak distinctiveness, as explained above.

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 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

 

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).

The services are partly similar and partly dissimilar. They target the general public and/or professionals whose degree of attention may vary from average to high. The signs are visually similar to an average degree and aurally at least similar to an above-average degree. The signs are not conceptually similar, although the impact of this difference is limited as it originates from a weak element. The distinctiveness of the earlier mark is normal.

The Opposition Division considers that in light of the factors established above, there is a clear likelihood of confusion between the signs. Even in the case of any possible higher degree of attention of the relevant public, the similarities between the signs are clearly perceptible.

As it was explained above, the verbal component of the sign (in the present case – the contested sign) usually has a stronger impact on the consumer than the figurative component. The principle is without doubt applicable in the present case where the differing figurative aspect has a limited impact. Furthermore, the beginnings are more memorable by the public. In the present case the signs’ verbal elements coincide in their first three letters and have quite similar endings, that is, ‘***UG’ of the earlier mark and ‘***ou’ of the contested sign.

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 European Union trade mark registration No 16 161 036, ‘SOGUG’ (word mark).

It follows from the above that the contested trade mark must be rejected for the services found to be similar to those of the earlier trade mark.

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

The opponent has also based its opposition on European Union trade mark registration No 16 165 094,  (figurative mark).

The other earlier right invoked by the opponent covers the same services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

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

 

 

Helen Louise MOSBACK

Michal KRUK

Saida CRABBE

 

 

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.