OPPOSITION No B 3 052 779

Soffico GmbH, Bürgermeister-Wegele-Straße 12, 86167 Augsburg, Germany (opponent), represented by Büsing, Müffelmann & Theye Rechtsanwälte in Partnerschaft mbB, Maximilianstraße 38, 80539 München, Germany (professional representative)

a g a i n s t

Zebware AB, Döbelnsgatan 21, 111 40 Stockholm, Sweden (applicant), represented by Aros Patent AB, Dragarbrunnsgatan 45, 751 45 Uppsala, Sweden (professional representative).

On 11/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 779 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 886 804 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 17 886 804 for the word mark ‘ORCHESTO’. The opposition is based on German trade mark registration No 302 015 217 479 for the word mark ‘Orchestra’. 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.

a) The goods and services

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

Class 38: Computer communication and internet access.

Class 42: Updating of memory banks of computer systems; updating websites for others; data mining; analytical services relating to computers; advisory and information services relating to computer peripherals; providing information about the design and development of computer software, systems and networks; operating search engines; computer project management in the field of EDP; computerised analysis of data; computer system analysis; development of computer systems; data migration services; design services; computer design and programming services; computer network services; development and testing of computing methods, algorithms and software; development of computer based networks; development of systems for the storage of data; development of systems for the processing of data; development of systems for the transmission of data; software development, programming and implementation; design and development of data display systems; design and development of data entry systems; design and development of data processing systems; design and development of electronic database software; design and development of data storage systems; design and development of systems for data input, output, processing, display and storage; design, creation and programming of web pages; preparation of computer programs for data processing; troubleshooting of computer hardware and software problems; monitoring of computer systems by remote access; hosting services and software as a service [SaaS] and rental of software; integration of computer systems and networks; IT consulting and information services; computer network configuration services; design of computer machine and computer software for commercial analysis and reporting; customization of computer hardware and software; testing, authentication and quality control.

The contested goods and services are the following:

Class 9: Computer software and firmware and hardware for information processing, including computer software for data storage, data processing and document management; computer peripheral devices; cloud servers; application software for cloud computing services.

Class 38: Provision of access to content, websites and portals; providing access to databases; providing telecommunications connections to a global computer network.

Class 42: Hosting services and software as a service and rental of software; computer programming and computer consulting services; drawing (design), development, tutorials, installation, maintenance, updating and technical support for computer software and computer software; analyzing of computer systems, consultation services relating to computer hardware; computer rental; rental of software.

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 term ‘including’, used in the applicant’s list of goods in Class 9, indicates that the specific goods 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).

It is also 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. These factors are known as the ‘Canon Criteria’ (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

Contested goods in Class 9

Programming is the writing of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations.

Computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information. Computers need programs to operate.

A cloud server is a logical server that is built, hosted and delivered through a cloud computing platform over the internet.

Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. Firmware is permanent software programmed into a read-only memory. Hardware refers to the machines, wiring, and other physical components of a computer or other electronic system.

All the contested goods in this class, consisting of various types of software, firmware, computer hardware and peripherals, are closely linked to the opponent’s computer design and programming services in Class 42.

This is because manufacturers of computer hardware and/or software will also commonly provide computer- and/or software-related services (for example, as a means of keeping the system updated). 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 may be complementary. Therefore, they are similar.

Contested goods in Class 38

The contested services in this class are identical to the opponent’s services in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s services in this class include, are included in, or overlap with, the opponent’s computer communication and internet access.

Contested goods in Class 42

Hosting services and software as a service; rental of software [listed twice]; analyzing of computer systems are identically contained in both lists (including synonyms).

The contested computer programming and computer consulting services are included in, or overlap with, the opponent’s computer design and programming services; IT consulting and information services. Therefore, they are identical.

The contested consultation services relating to computer hardware are included in the broad category of the opponent’s IT consulting and information services. Therefore, they are identical.

The contested drawing (design), development, tutorials, installation, maintenance, updating and technical support for computer software and computer software are at least similar to the opponent’s software development, programming and implementation; troubleshooting of computer hardware and software problems; customization of computer hardware and software. All these services, at the very least, coincide in their providers, relevant public and distribution channels.

The contested computer rental is similar to the opponent’s computer design and programming services, because these services usually coincide in their providers, relevant public and distribution channels.

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.

The applicant argued that the relevant goods and services target professionals. However, some of them, like the opponent’s customization of computer hardware and software or the contested consultation services relating to computer hardware in Class 42, also target the public at large. Consequently, in the present case, the goods and services found to be identical, similar or at least similar are directed at the public at large and business customers with specific professional knowledge or expertise.

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

c) The signs

Orchestra	ORCHESTO
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 are word marks composed of single words, ‘Orchestra’ and ‘ORCHESTO’, respectively. 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 they are depicted in upper- or lower-case letters or a combination thereof. For example, the earlier mark could be depicted in upper-case characters, ‘ORCHESTRA’.

The word ‘orchestra’ describes a group of instrumentalists in German (information extracted from Duden on 04/09/2019 at www.duden.de/suchen/dudenonline/orchestra), which, as such, is inherently distinctive for the opponent’s services. The applicant argues that ‘ORCHESTRA’ has a certain meaning in the field of IT which makes it non-distinctive or weakly distinctive. However, the majority of the evidence submitted by the applicant refers to the word ‘Orchestration’ (understood as the automated configuration, coordination, and management of computer systems and software), and not the word ‘Orchestra’. The same meaning does not have to be attributed to the word ‘Orchestra’, especially given its obvious meaning in German, as noted above. To support its claim, the applicant referred to appendix C which, however, does not provide a definition of this term, but rather of the terms ‘sequencer’ and ‘wavetable’. In addition, appendix E (‘Assembling your cloud orchestra’), to which the applicant referred, uses this term as a reference to a group of instrumentalists or, at least, a play on this meaning. It does not suggest any IT-related meanings. Also, the fact that the application for the word mark ‘Orchestra’ before the USPTO was abandoned by the opponent (appendix I), and not refused, does not prove that this term is non-distinctive.

The Opposition Division considers that the word ‘Orchestra’ itself is not descriptive for the opponent’s services in the relevant territory. Nevertheless, for the sake of simplification, the Opposition Division will proceed on the assumption that its inherent distinctive character is weak for the opponent’s services, as this is the best-case scenario for the applicant. The earlier trade mark could not be considered non-distinctive as, according to case-law, ‘in proceedings opposing the registration of a [European Union] trade mark, the validity of national trade marks may not be called into question’ (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40-41).

The word ‘ORCHESTO’ is meaningless in the relevant territory and, therefore, inherently distinctive to an average degree for the contested goods and services.

Visually and aurally, the signs coincide in the letter sequence ‘ORCHEST*(*)’, located at their beginning, where consumers normally focus their attention. This part of the signs will be pronounced in the same way. The signs differ in their final letters, ‘RA’ in the earlier mark and ‘O’ in the contested sign, which will produce a different sound. Overall, the signs are visually and aurally highly similar.

Conceptually, although the public in the relevant territory may understand or associate the earlier mark with certain meaning(s), 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.

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 was assumed to be inherently distinctive to a low degree for the opponent’s services.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services are partly identical and partly similar to varying degrees to the opponent’s services. The signs are visually and aurally highly similar and conceptually they are not similar. The earlier mark as a whole was assumed to be inherently distinctive to a low degree for the relevant public, namely the general public and business customers displaying an average to high degree of attention.

Both marks are word marks and are composed of single words of similar lengths (9 and 8, respectively). The earlier mark ‘ORCHESTRA’ is nearly entirely (except for its two final letters) reproduced at the beginning and middle section of the contested sign, ‘ORCHESTO’. It is settled case-law that 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.

At the same time, the differences between the signs are located in their endings to which the public normally pays less attention (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64-65). The fact that a part of the relevant public will be more attentive does not mean that they will examine the mark before them in the slightest detail. Even for a public with a high level of attentiveness, the fact remains that the average consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind (16/07/2014, T‑324/13, Femivia, EU:T:2014:672, § 48).

In the Opposition Division’s view, even assuming that the word ‘ORCHESTRA’ were somewhat weak for the opponent’s services, this would not automatically lead to the conclusion that consumers would entirely neglect the coincidence of 7 out of its 9 letters located at the beginning of the contested sign (11/03/2019, R 1735/2018-4, immonext (fig.) / immodex, § 20, 35-36).

Consequently, the differences between the signs are not sufficient to counterbalance their similarities and the signs produce similar overall impressions. The contested sign lacks sufficient elements that could allow consumers, even those displaying a high degree of attention, to safely differentiate between the signs.

Therefore, the Opposition Division concludes that there is a likelihood of confusion for the relevant public in Germany and the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 015 217 479.

It follows that the contested trade mark must be rejected for all the contested goods and services under Article 8(1)(b) 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, 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

Liliya YORDANOVA

Jakub MROZOWSKI

Reiner SARAPOGLU

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.