OPPOSITION No B 3 071 714

Modalfa - Comércio e Serviços, S.A., Lugar do Espido, Via Norte, 4470 Maia, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Global E Shop Solutions Limited, The Jack Doyle Suite, Lawlor's Hotel Poplar Square, Naas East, Naas, Ireland (applicant), represented by Tomkins & Co., 5 Dartmouth Road, Dublin 6, Ireland (professional representative).

On 13/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 714 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software.

Class 35: Web site traffic optimisation; search engine and web site optimisation; promoting the designs of others by means of providing online portfolios via a website; the provision of business information and advice; business management advice; business organisation advice; business advice relating to marketing; business advice relating to franchising.

2. European Union trade mark application No 17 904 112 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

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 904 112 . The opposition is based on Portuguese trade mark registration No 506 862 and on Portuguese trade mark registration No 556 726 . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Portuguese trade mark registration No 506 862 .

a) The goods and services

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

Class 9: Sunglasses, spectacle frames, spectacle lenses, spectacle cases.

Class 35: Advertising, dissemination of advertising matter through all means and direct mail advertising, business management, business administration, office functions, retailing and wholesaling in shops or via global computer networks or via catalogue of articles relating to childcare, clothing, footwear, headgear, leatherware, jewellery, spectacles, toys, games, perfumery and cosmetics, and furniture.

The contested goods and services, following a limitation made by the applicant in class 35, are the following:

Class 9: Computer software; computer software for use in creating and designing websites; software for designing online advertising on websites; computer software and software development tools and applications for designing, editing, creating, hosting, customising, modifying, maintaining and updating websites, web pages for others and interactive applications, on a global computer network, mobile devices and social media sites and applications; providing downloadable software for use by others to customise, design, edit, modify, maintain and update websites, web pages and interactive applications; interactive multimedia computer programs for use by others in designing, editing, creating, modifying, customising and updating websites, web pages and interactive applications, on a global computer network, mobile devices and social media sites and applications; computer e-commerce software to allow users to perform electronic business transactions via a global computer network, mobile devices and social media sites and applications; downloadable software for transaction processing, payment and billing systems.

Class 35: Web site traffic optimisation; search engine and web site optimisation; promoting the designs of others by means of providing online portfolios via a website; the provision of business information and advice; business management advice; business organisation advice; business advice relating to marketing; business advice relating to franchising.

Class 42: Website design services; website design and development; design and development of software for website development; planning, design, development and maintenance of online websites for third parties; providing temporary use of online non-downloadable software for designing, creating, hosting, customising, editing, modifying, maintaining and updating websites, web pages for others and interactive applications, on a global computer network, mobile devices and social media sites and applications; application services provider (ASP) featuring software for use in designing, editing, creating, hosting, customising, modifying, maintaining and updating websites, web pages of others and interactive applications, on a global computer network, mobile devices and social media sites and applications; cloud computing featuring software for use by others in designing, creating, customising, modifying, editing, maintaining and updating websites, web pages and interactive applications, on a global computer network, mobile devices and social media sites and applications; computer services, namely, cloud hosting provider services; providing virtual computer systems and virtual computer environments through cloud computing; providing consultation services in the field of website development; developing and hosting a server on a global computer network for the purpose of facilitating e-commerce transactions; providing on-line non-downloadable software for supporting and managing the creation and sending of bulk electronic mail which customers can use to design and send email advertising and promotional campaigns and to manage such campaigns; providing temporary use of online non-downloadable software for use by others to customise, modify, edit, maintain and update websites, web pages and interactive applications, on a global computer network, mobile devices and social media sites and applications; website design and development for others.

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 services to show the relationship of individual 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.

Contested goods in Class 9

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The opponent’s retailing in shops or via global computer networks or via catalogue of articles relating to games in Class 35 is broad enough to cover the retailing of all kinds of games which could be, for example, computer games software. Computer games software is, of course, included within the contested term computer software.

Therefore, the contested computer software is similar to an average degree to the opponent’s retailing in shops or via global computer networks or via catalogue of articles relating to games in Class 35.

However, none of the remaining contested goods in Class 9 shares relevant points of contact with the opponent’s goods in Class 9 or services in Class 35 to warrant a finding of similarity.

The opponent’s sunglasses, spectacle frames, spectacle lenses, spectacle cases in Class 9 are clearly and manifestly not similar to the contested software goods in that class because they do not share relevant Canon factors of similarity.

The opponent’s advertising, dissemination of advertising matter through all means and direct mail advertising, business management, business administration, office functions in Class 35 are all business services directed at business customers which have a different nature and purpose from the contested goods in Class 9, being neither in competition nor complementary, and being usually distributed via different distribution channels and by different producers/providers.

In addition, the opponent’s retailing and wholesaling in shops or via global computer networks or via catalogue of articles relating to childcare, clothing, footwear, headgear, leatherware, jewellery, spectacles, toys, games, perfumery and cosmetics, and furniture are not similar to the remaining contested goods in Class 9. None of the goods that are the subject of the opponent’s said retailing and wholesaling services is similar to the remaining contested goods. When goods sold at retail are dissimilar to the actual goods themselves, no similarity can be found between them.

It follows that the remaining contested goods in Class 9 are dissimilar to the opponent’s goods in Class 9 and services in Class 35.

Contested services in Class 35

The contested promoting the designs of others by means of providing online portfolios via a website; business advice relating to marketing are included within the broad category of, or overlap with, the opponent’s advertising. Therefore, they are identical.

The contested the provision of business information and advice; business management advice; business organisation advice; business advice relating to franchising are all included within the broad category of, or overlap with, the opponent’s business management. Therefore, they are identical.

The contested web site traffic optimisation; search engine and web site optimisation are services relating to the marketing strategy of a business. It follows that these services are at least similar to the opponent’s advertising given that they coincide in purpose, relevant public and provider.

Contested services in Class 42

None of the contested services in this class shares relevant trade mark points of contact with the goods or services of the opponent in Class 9 or Class 35 respectively such as to justify a finding of similarity. They have different natures and purposes; they do not compete nor are complementary; moreover, they usually have different and distinct distribution channels and different providers/producers. Therefore, they are dissimilar.

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar (to varying degrees) are partly directed at the public at large and partly directed at 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

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 consists of the stylised term ‘MO’ which is meaningless for the relevant public and so normally distinctive of the services in question. The said stylisation is not such as to prevent the relevant consumer from immediately perceiving the letters ‘MO’ and such stylisation will be perceived as being essentially decorative in nature.

The contested figurative sign comprises the slightly stylised letters ‘MO’ in white lettering placed against the device of what appears to be a shopping bag in the colours blue and white. While a part of a number of items are visible inside the said shopping bag, they are too small to be legible or to be perceived clearly. The term ‘MO’ is meaningless for the relevant goods and services and so normal distinctive. The stylisation of the term ‘MO’ will be perceived as being essentially decorative in nature.

The said figurative device bears no direct reference to the relevant goods or services and so is normally distinctive of them. However, in any event, 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).

None of the elements of the contested sign is dominant (i.e. visually outstanding).

Visually, the signs coincide in the term ‘MO’, differing in the figurative and stylised elements of both signs which have less impact than the coinciding term ‘MO’ for the reasons explained above. On this basis, the signs are considered to be visually similar to an average degree.

Aurally, as both signs will be pronounced ‘MO’ they are phonetically identical.

Conceptually, although the verbal element of the signs is meaningless, the contested sign conveys the concept of a bag, such as a shopping bag, and, to that extent, 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 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).

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.

In the present case, the signs at issue have been found to be aurally identical, visually similar to an average degree, and not conceptually similar (arising from the figurative device of the bag/shopping bag of the contested sign which, nevertheless, has less visual impact as a figurative element than the coinciding verbal element). The goods and services are partly identical, partly similar at least to an average degree, and partly dissimilar. The earlier mark enjoys normal inherent distinctive character and the degree of attention is either average or high.

Taking all of the relevant factors into consideration, the Opposition Division considers that the similarities between the signs are not counteracted by the differences between them, which pertain merely to figurative and stylised elements of a secondary nature. The Opposition Division also takes account of the fact that the distinctive term ‘MO’ - which is the only verbal element of the earlier mark – is reproduced within the contested sign in which, also, it is the only verbal element.

Indeed, it is quite conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or at least similar to those of the earlier trade mark including for those for which the degree of attention may be high.

The rest of the contested goods and 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 goods and services cannot be successful.

The opponent has also based its opposition on Portuguese trade mark registration No 556 726 .

Since this mark is identical to the one which has been compared and covers a narrower scope of services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, 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 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

Angela DI BLASIO

Kieran HENEGHAN

María del Carmen COBOS PALOMO

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.