OPPOSITION No B 3 057 351

Dialoga Servicios Interactivos, S.A., Plaza Euskadi No 5 planta 12, 48009 Bilbao, Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Komson Media Limited, 4 Prometheus Street, 1065 Nicosia, Cyprus (applicant), represented by Ioannides Cleanthous & Co LLC, 4 Prometheus Street 1st floor, 1065 Nicosia, Cyprus (professional representative).

On 07/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 351 is partially upheld, namely for the following contested goods and services:

Class 9: All goods in Class 9.

Class 42: All services in Class 42.

2. European Union trade mark application No 17 899 910 is rejected for all the above goods and services. It may proceed for the remaining services in Class 41.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 899 910 for the figurative mark . The opposition is based on European Union trade mark registration No 8 917 155 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 8 917 155 for the figurative mark .

The date of filing of the contested application is 15/05/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 15/05/2013 to 14/05/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 38: Telecommunications services.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 08/04/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 18/06/2019 to submit evidence of use of the earlier trade mark. On 21/05/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

 DOC 1-6: invoices issued by the opponent, dated during 2013-2018, showing the earlier mark at the top of the invoices, addressed to companies in Belgium, Spain, France, Italy, the Netherlands and Portugal, showing (in the invoices that are in English) items such as ‘incoming calls from fixed numbers’, ‘incoming calls from mobile numbers’, ‘number usage monthly charge’, ‘outgoing calls charge’, ‘incoming calls charge’ and ‘fax2mail’.

 DOC 7-12: invoices (in euros and pounds sterling) received by the opponent for advertising and participation and stands at events, dated during 2013-2018.

 DOC 13: advertising in Seguritecnia Magazine (in Spanish), dated January 2015, showing the earlier mark as and showing offices in Germany, Spain, France, the Netherlands and the United Kingdom.

 DOC 14-19: various brochures in English, Italian and Spanish (2015-2016) on call centre solutions, call tracking and ‘internet of things communication’; for example a brochure, dated November 2015, showing the earlier mark and ‘SIP Trunk Rates’ for different countries, fixed or mobile. The document also refers to several services such as virtual call centre solutions, text to speech, automated speech recognition, speaker verification and national toll-free numbers, and refers to the opponent as ‘your cloud telephony company’ and ‘All your telephony in the Cloud’.

 DOC 21: article, dated 19/12/2016, extracted from www.lainformacion.com, stating ‘Dialoga Group will begin to offer in Mexico its cloud telephony and communications services, as it already does in the USA, Spain, Germany, United Kingdom, Switzerland, Belgium, France, Italy, Austria, Holland, Denmark, Sweden, Ireland, the Czech Republic, Slovakia, Poland and Portugal. Within the portfolio of products developed by Dialoga Group, special mention must be made of the sophisticated solutions of natural language recognition, voice biometrics, artificial intelligence, omnichannel integration of all communication channels of the company, recording, monitoring and transcription of calls, WebRTC lines, multiconference, bulk SMS service, IoT and the possibility of providing local numbering of any country, whether geographic, toll-free or cost-sharing.’

 DOC 26: extract from wiki.dialogagroup.com, dated 05/01/2017, titled ‘Dialogo Group launches its WebRTC platform for contact centers’ and stating ‘[A]fter becoming the only operator with its own network in 18 countries (EU and America), allowing it to provide high quality telecommunications services without having to resort to resellers, Dialoga Group has now developed its own WebRTC platform for final users, call center agents and homeshoring agents.’

 DOC 29: extract from wiki.dialogagroup.com, dated 09/02/2017, titled ‘WebRTC technology brings a real revolution in facilitating and promoting communications while making them cheaper’. The earlier mark appears on top of the article as .

 DOC 33: extract from www.adnkronos.com, dated 23/01/2017, titled ‘Dialoga Group lancia la propria piattaforma WebRTC destinata ai contact center’ (‘Dialoga Group launches its own WebRTC platform intended for contact centre’, translation by the examiner).

 DOC 44: extract from wiki.dialogagroup.com, dated 23/06/2017, titled ‘Dialoga strengthens its position in Europe with the opening of a new office in Venice’. It states that ‘[t]he telecom operator Dialoga continues its strategy of geographical expansion, which has materialised this week with the opening of a new office in Venice. Italy thus becomes the eighth country in which the operator has a physical presence, having been preceded by Spain, Germany, England, Holland, USA, France and Portugal.’

The evidence, inter alia the invoices, shows that the place of use is Belgium, Spain, France, Italy, the Netherlands and Portugal. This can be inferred from the language of the documents and some addresses in the respective countries. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, advertisement and articles, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The earlier mark has been consistently used in several countries of the European Union during the entire relevant period.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier marks.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Although the verbal element ‘Dialoga’ is also part of the company name of the opponent, it is clear that it is used throughout the evidence as a trade mark in relation to the relevant services. In the invoices, it can be seen that the earlier mark is used as a logo separately from the company name, ‘DIALOGA SERVICIOS INTERACTIVOS SA’, which appears in standard characters underneath.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, although it is true that the earlier mark is sometimes used as , it is also very often used as or . While the latter use contains additional figurative and verbal elements, it is considered that this use does not affect the distinctive character of the earlier mark. The elements ‘Group’ and ‘All your telephony in the Cloud’ are much smaller and therefore less dominant. Moreover, they are less distinctive, as ‘Group’ refers to the entity providing the services and ‘All your telephony in the Cloud’ refers to the type of services provided. Even though in some items of evidence a figurative element is also depicted in front of the earlier mark, this does not affect the distinctive character of the earlier mark, as the figurative element is fully separated from the earlier mark and forms an independent element.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The evidence shows that the earlier mark has been used for various telecommunication services such as incoming calls from fixed numbers, incoming calls from mobile numbers, number usage monthly charge, outgoing calls charge, incoming calls charge, fax2mail, call centre solutions, call tracking and internet of things communication, natural language recognition, voice biometrics, artificial intelligence, omnichannel integration of all communication channels of the company, recording, monitoring and transcription of calls, WebRTC lines, multiconference, bulk SMS service, IoT and providing local numbering of any country, whether geographic, toll free or cost sharing. Therefore, use has been proved for telecommunications services.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territories for all the services in Class 38.

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 the following:

Class 38: Telecommunications services.

The contested goods and services are the following:

Class 9: Software applications; downloadable software applications; software applications for mobile devices; smartphone software applications, downloadable; software applications for use with mobile devices; downloadable smart phone applications (software); computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; media content; computer application software for streaming audio-visual media content via the internet; computer programs for editing images, sound and video; computer software in the field of electronic publishing.

Class 41: Editing or recording of sounds and images; multimedia publishing; electronic publishing; publishing and reporting; electronic publishing services; on-line publishing services; digital video, audio and multimedia entertainment publishing services; publishing services carried out by computerised means.

Class 42: Installation and customisation of computer applications software; design and development of software in the field of mobile applications; electronic storage of entertainment media content; software development in the framework of software publishing; engineering services for applications on large and medium-sized computer systems; hosting multimedia entertainment content; consulting in the field of cloud computing networks and applications; application service provider services; hosting of digital content online; hosting of multimedia content for others; hosting of multimedia applications; development of software for compression and decompression of multimedia contents; design of software for data and multimedia content conversion from and to different protocols; development of application software for delivery of multimedia content; advisory services relating to computer software; advisory services relating to computer software used for publishing; design of software for audio and video operators.

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 ‘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 applications; downloadable software applications; software applications for mobile devices; smartphone software applications, downloadable; software applications for use with mobile devices; downloadable smart phone applications (software); computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; media content; computer application software for streaming audio-visual media content via the internet; computer programs for editing images, sound and video; computer software in the field of electronic publishing are all software and media content. These goods are similar to the opponent’s telecommunications services as they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 41

The contested editing or recording of sounds and images; multimedia publishing; electronic publishing; publishing and reporting; electronic publishing services; on-line publishing services; digital video, audio and multimedia entertainment publishing services; publishing services carried out by computerised means are dissimilar to the opponent’s telecommunications services. These services have a different nature, a different purpose and a different method of use. They are not complementary, nor in competition. Furthermore, they are not provided by the same undertakings, and they are distributed through different distribution channels and target a different relevant public.

Contested services in Class 42

The contested installation and customisation of computer applications software; design and development of software in the field of mobile applications; electronic storage of entertainment media content; software development in the framework of software publishing; engineering services for applications on large and medium-sized computer systems; hosting multimedia entertainment content; consulting in the field of cloud computing networks and applications; application service provider services; hosting of digital content online; hosting of multimedia content for others; hosting of multimedia applications; development of software for compression and decompression of multimedia contents; design of software for data and multimedia content conversion from and to different protocols; development of application software for delivery of multimedia content; advisory services relating to computer software; advisory services relating to computer software used for publishing; design of software for audio and video operators are various services in the IT field. These services are similar to the opponent’s telecommunications services as they are complementary and coincide in their distribution channels. Some of these services also have the same purpose, might be provided by the same undertakings and/or target the same relevant public.

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 similar are directed at the public at large and at a professional public.

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

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 figurative mark composed of the verbal element ‘Dialoga’ in thick black letters with a prominent red dot on the letter ‘i’. The word ‘Dialoga’ is the third person singular form of the present indicative (he/she talks) or the imperative form (you talk) of the Spanish verb dialogar, meaning ‘to talk, to have a conversation’. The public throughout the whole European Union will associate the word with this meaning or with the noun ‘Dialogue’, meaning ‘a conversation between two or more people or groups’, either because it exists as such (e.g. in Spanish and Portuguese) or due to the similarity of the equivalent in their own language (e.g. Dialog in Czech, Danish, German, Norwegian, Polish, Romanian and Swedish, Dialogue in English and French, Dialoog in Estonian and Dutch, Dialogs in Latvian, Dialogas in Lithuanian, диалог (transliterated as dialog in Bulgarian) Dialógus in Hungarian, Dialogo in Italian, Dijalog in Croatian, Διάλογος (transliterated as Diálogos in Greek, etc.). The distinctiveness of the verbal element ‘Dialoga’ must be seen as low in connection with the telecommunications services in Class 38, which enable people inter alia to talk to each other or to participate in a conversation.

The verbal element of the contested sign ‘Dialog’ will, for the reasons set out above, also be perceived as referring to the verb or noun ‘dialogue’ and has the same low degree of distinctiveness, as it might indicate that the relevant goods and services (software, media content, IT services) are to make a dialogue possible.

The figurative element in the contested sign depicts a speech bubble with three dots and will be perceived as an allusion to ‘Dialog’, and therefore it also has a low degree of distinctiveness.

The red rectangular background will be perceived merely as a decorative element, with a low degree of distinctiveness.

The signs have no element that could be considered clearly more distinctive or more dominant (eye-catching) than other elements.

Visually, the signs coincide in the first letters ‘Dialog*’ of their sole verbal elements, which have a low degree of distinctiveness in both signs. However, they differ in the last letter ‘A’ of the earlier mark. The coincidence in the beginning of the signs is particularly relevant as 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. The signs also coincide in the fact that they both use the colour red. However, they differ in the slight stylisation and red dot of the earlier mark. Despite being rather large, the red dot will be perceived as a dot and will therefore not take attention away from the verbal element. The signs also differ in the graphical depiction of the contested sign, namely the slight stylisation of the verbal element and the figurative elements, which, however, have a low degree of distinctiveness, as explained above.

Therefore, taking into account that the verbal elements have the same degree of distinctiveness in both signs and that the signs have no elements that will have a stronger impact on the relevant public, 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 ‘DIALOG*’. The pronunciation differs in the sound of the last letter ‛A’ in the earlier mark.

Therefore, taking into account that the verbal elements have the same degree of distinctiveness in both signs, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the concept of ‘dialogue’, which is reinforced in the contested sign by the figurative element depicting a speech bubble, the signs are conceptually similar to a high degree.

As the signs have been found similar in all aspects 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. Considering what has been stated above in section c) of this decision, the degree of distinctiveness of the earlier mark must be seen as low.

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 that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all the 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 relevant public is the public at large and the professional public, and the degree of attention varies from average to high.

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

The goods and services are partly similar and partly dissimilar.

The signs are visually similar to an average degree, and aurally and conceptually they are similar to a high degree.

The earlier mark has a low degree of distinctiveness. Although this is an important factor to take into account when assessing likelihood of confusion, it must, however, be balanced with the other factors, like the degree of similarity of the signs and the services. The Court has emphasised on several occasions that a finding of a low degree of distinctiveness for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, even though the commonalities between the signs are in weak verbal elements, there are no other elements that are more distinctive or that have a significant visual impact. The earlier mark is depicted in a standard font, and, although the red dot is quite large, it will be seen as just a stylised coloured dot and will not divert attention from the verbal element. Furthermore, the contested sign also uses red in its background, the word ‘Dialog’ is not particularly stylised and the figurative element depicting a speech bubble will be seen merely as an allusion to ‘Dialog’. Therefore, the overall impression of the signs is highly similar.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Given that the contested sign conveys the same concept as the earlier mark and differs from it solely in its spelling, the contested sign could be perceived as a particular configuration of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, also taking into account a possible high degree of attention, as imperfect recollection due to the striking similarities between the signs cannot be excluded even for the public displaying a high degree of attention, as explained above.

The applicant refers to a previous decision of the Office, 16/12/2008, R 1080/2005‑4, to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decision of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicant is not relevant to the present proceedings, as the signs in that case differed much more in stylisation, structure and meaning as a whole and are therefore not comparable to the signs in the present case.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

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

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

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

Carlos MATEO PÉREZ

Saida CRABBE

Marzena MACIAK

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.