OPPOSITION Nо B 3 062 804

 

Klas Limited Ta Klas Telecom, 4th Floor, One Kilmainham Square, Inchicore Road, DO8 ET1W Kilmainham, Ireland (opponent), represented by Barker Brettell Sweden AB, Östermalmsgatan 87, 114 59 Stockholm, Sweden (professional representative) 

 

a g a i n s t

 

Raybo (Beijing) Technology Co., Ltd., Room 092, 3rd Floor, Suite D, Building 24, Yard 68, Beiqing Rd, Haidian District, Beijing, People's Republic of China (applicant), represented by Ieva Zvejsalniece, Imantas Iela 3b-18, 1067 Riga, Latvia (professional representative).

On 10/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 062 804 is partially upheld, namely for the following contested goods and services:

 

Class 9: Computer memory devices; computer programs, recorded; computer software, recorded; computer programs [downloadable software]; computer game software; computer software applications, downloadable; application software; apparatus and instruments for controlling electricity; apparatus and instruments for accumulating electricity; apparatus and instruments for switching electricity; apparatus and instruments for transforming electricity; apparatus and instruments for regulating electricity; apparatus and instruments for conducting electricity; biometric identification systems. Class 38: Internet broadcasting services; Internet radio broadcasting services; message sending; communications by telephone; computer aided transmission of messages and images; transmission of electronic mail; providing telecommunications connections to a global computer network; providing user access to global computer networks; providing internet chatrooms; providing online forums. Class 42: Technical research; conducting technical project studies; computer programming; computer software design; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; providing information on computer technology and programming via a web site.

2.

European Union trade mark application No 17 766 809 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

 

On 24/08/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 766 809 ‘TRX’ (word mark). The opposition is based on European trade mark registration No 15 766 934 ‘TRX’. The opponent invoked Article 8(1)(a) EUTMR, 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.

 

a) The goods and services

 

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

 

Class 9: Computer hardware, software, networking and internetworking equipment, and peripherals for use in connection with rail, airline, marine, and passenger, freight, and military vehicle transportation, and national and international defense, emergency response, disaster relief, and law enforcement, namely routers, switches, packet switches, Ethernet switches, MPLS switches, GMPLS switches, ATM switches; modems, processors, transmitters, antennas, satellites and associated computer software for system operation, network management, node management, shelf management, network and performance monitoring.

The contested goods and services are the following:

Class 9: Computer memory devices; computer programs, recorded; computer software, recorded; computer programs [downloadable software]; computer game software; computer software applications, downloadable; Rechargeable batteries; application software; Apparatus and instruments for controlling electricity; Apparatus and instruments for accumulating electricity; Apparatus and instruments for switching electricity; Apparatus and instruments for transforming electricity; Apparatus and instruments for regulating electricity; Apparatus and instruments for conducting electricity; biometric identification systems.

Class 35: Direct mail advertising; advertising; on-line advertising on a computer network; rental of advertising time on communication media; provision of space on web sites for advertising goods and services; commercial administration of the licensing of the goods and services of others; provision of an on-line marketplace for buyers and sellers of goods and services; updating and maintenance of data in computer databases; sponsorship search; provision of commercial information via the Internet; providing business information via a web site.

Class 36: Insurance brokerage; instalment loans; capital investment; clearing, financial; financing services; financial consultancy; electronic funds transfer; providing financial information via a web site; trusteeship; monetary transactions.

Class 38: Internet broadcasting services; Internet radio broadcasting services; message sending; communications by telephone; computer aided transmission of messages and images; transmission of electronic mail; providing telecommunications connections to a global computer network; providing user access to global computer networks; providing internet chatrooms; providing online forums.

Class 41: Teaching; arranging and conducting of conferences; organization of exhibitions for cultural or educational purposes; providing on-line electronic publications, not downloadable; club services [entertainment or education]; entertainment information; game services provided on-line from a computer network; providing on-line music, not downloadable; audio and video recording services; Providing online entertainment in the nature of fantasy sports leagues.

Class 42: Technical research; conducting technical project studies; packaging design; design and development of multimedia products; computer programming; computer software design; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; providing information on computer technology and programming via a web site.

PRELIMINARY REMARK

In its observations, the opponent raises arguments for the finding of similarity between all the goods and services under comparison. However, the observations are made on the basis of a list of goods in Class 9 different from the one for which the earlier mark has been registered, as reflected above. Therefore, these arguments are not taken into account in the following comparison of the goods and services.

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.

An interpretation of the wording of the list of the opponent’s goods is required to determine their scope of protection, as the term ‘namely’ shows the relationship of individual goods to a broader category. It is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in class 9

The contested apparatus and instruments for switching electricity include, as a broader category the opponent's switches. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested biometric identification systems, which is a type of software overlaps with the opponent's associated computer software for system operation. They are identical, because of operating systems that require identification via e.g. fingerprinting.

The contested computer programs, recorded; computer software, recorded; computer programs [downloadable software]; computer software applications, downloadable; application software include, as broader categories the opponent's associated computer software for system operation, network management, node management, shelf management, network and performance monitoring. Since the Office cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the earlier goods.

The contested apparatus and instruments for controlling electricity; apparatus and instruments for accumulating electricity; apparatus and instruments for transforming electricity; apparatus and instruments for regulating electricity; apparatus and instruments for conducting electricity are highly similar to the opponent's switches because they have the same nature, all being essential within an electrical circuit. Consequently, they are likely to be produced by the same undertakings and sold in the same specialized shops or sections in DIY shops. They target the same consumers. Moreover, they are complementary.

The contested computer memory devices that store information for immediate use in a computer are similar to the opponent's processors which performs basic input/output operations in a computer because they coincide in producer, in end user and are sold in the same places. Moreover, they cannot function without each other and are therefore, complementary.

The contested computer game software is similar to the opponent's processors because processors include, as a broader category, personal computers which can also be used to play games. Computers can even be equipped with specific components (e.g. high performance video cards) which make them particularly suitable for gaming. Therefore games software and processors can be complementary and target the same public. Furthermore, they can coincide in producers and distribution channels.

The contested rechargeable batteries are dissimilar to all the goods of the opponent´s earlier right, which cover computers and components, specific software, communication equipment and electronic components, because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested services in class 35

The contested advertising; updating and maintenance of data in computer databases; direct mail advertising; on-line advertising on a computer network; rental of advertising time on communication media; provision of space on web sites for advertising goods and services; commercial administration of the licensing of the goods and services of others; provision of an on-line marketplace for buyers and sellers of goods and services; sponsorship search; provision of commercial information via the Internet; providing business information via a web site, which are services involving advertising, marketing and sales (indirectly) are dissimilar to all goods covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested services in class 36

The contested insurance brokerage; instalment loans; capital investment; clearing, financial; financing services; financial consultancy; electronic funds transfer; providing financial information via a web site; trusteeship; monetary transactions are services of a financial nature and thus have nothing in common with the opponent´s goods. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users. Therefore, they are dissimilar.

Contested services in class 38

The contested internet broadcasting services; internet radio broadcasting services; computer aided transmission of messages and images; transmission of electronic mail are similar to the opponent's transmitters because transmitters are necessary component parts of all electronic devices that communicate by radio, such as radio and television broadcasting stations and wireless computer networks. Consequently, these goods and services are strictly complementary and share the same purpose. They, moreover coincide in end user and distribution channels.

The contested message sending; communications by telephone; providing telecommunications connections to a global computer network; providing user access to global computer networks; providing internet chatrooms; providing online forums are similar to the opponent's modems, which are hardware devices that convert data from a digital format intended for communication directly between devices. Modems are ancillary to the services provided in this field and delivered by the same undertaking when contracting their services. Consequently, they share the same purpose and are complementary. They, moreover, target the same public through the same channels of distribution.

Contested services in class 41

The contested teaching; arranging and conducting of conferences; organization of exhibitions for cultural or educational purposes; providing on-line electronic publications, not downloadable; club services [entertainment or education]; entertainment information; game services provided on-line from a computer network; providing on-line music, not downloadable; audio and video recording services; providing online entertainment in the nature of fantasy sports leagues are dissimilar to all goods covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested services in class 42

The contested computer programming; computer software design; updating of computer software; consultancy in the design and development of computer hardware; maintenance of computer software; providing information on computer technology and programming via a web site are similar to the opponent's associated computer software for system operation, network management, node management, shelf management, network and performance monitoring because manufacturers of computers and/or software will also commonly provide computer- and/or software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary.

The contested technical research; conducting technical project studies are similar to the opponent's associated computer software for system operation, network management, node management, shelf management, network and performance monitoring because these services can include software projects and related research. Therefore, the compared goods and services are complementary, they target the same consumer and follow the same the distribution channels by the same producer/provider.

The contested packaging design; design and development of multimedia products are dissimilar to all the goods covered by the opponent's earlier right because they have nothing in common. The design of packaging and multimedia products evolves around the creation of a new product by development of ideas. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target a different public.

c) The signs

 

TRX	TRX
Earlier trade mark	Contested sign

 

The signs are identical.

 

e) Global assessment, other arguments and conclusion

 

The goods and services are identical or similar to varying degrees and the signs are identical.

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for the identical goods and services.

Furthermore, 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).

Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for the remaining similar (to various degrees) contested goods and 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Loreto URRACA LUQUE

Cynthia DEN DEKKER

Rosario GURRIERI

 

 

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.