OPPOSITION No B 3 066 282

Fullhouse IT-Services AG, Daimlerweg 5, 82538 Geretsried, Germany (opponent), represented by DTS Patent- & Rechtsanwälte Schnekenbühl und Partner mbB, Marstallstr. 8, 80539 München, Germany (professional representative)

a g a i n s t

Pretecs Networks Inc., 300-1095 McKenzie Ave, V8P 2L5 Victoria, Canada (applicant), represented by Pintz & Partners LLC, Csepreghy utca 2. II. em., 1085 Budapest, Hungary (professional representative).

On 25/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 282 is upheld for all the contested services.

2. European Union trade mark application No 17 925 503 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 925 503 for the figurative trade mark . The opposition is based on, inter alia, European Union trade mark registration No 16 342 164 for the word mark ‘Fullhouse IT’. 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 European Union trade mark registration No 16 342 164 for the word mark ‘Fullhouse IT’.

a) The services

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

Class 37: Assembly and maintenance of IT networks and telephone systems (hardware); hardware installation for a secure, encrypted communications connection and virtual networks; setting up of mobile telephone services through the assembly and installation of hardware; setting up of internet calling through the assembly and installation of hardware; installation of hardware; repair of IT systems (hardware).

Class 42: Installation, configuration and maintenance of software for IT networks and telephone systems; consultancy in matters relating to communications technology, included in class 42; conducting of IT system migration (software); software installation for a secure, encrypted communications connection and virtual networks; remote maintenance and technical specialist consultancy for IT networks, IT systems, software and hardware, included in class 42; technical planning of data security and archiving solutions; software installation for data security and archiving solutions; setting up of mobile telephone services through the installation and configuration of software; setting up of internet calling through the installation and configuration of software; installation of security software; EDP application programming, and EDP application programming, for others; installation of databases (software) and other application programs (software); creation of data protection and IT security concepts, included in class 42; data protection and IT security services for protecting against illegal network access, computer viruses; technical monitoring of network security; repair of IT systems (software); software development, programming and implementation; IT consultancy and information; advisory services relating to computer programming; advisory and consultancy services relating to computer hardware; consultancy and advice on computer software and hardware.

The contested services are the following:

Class 38: Electronic messaging; providing telecommunications access to server centres; providing access to databases; arranging access to databases on the internet; communication services for the electronic transmission of data; communications services for the exchange of data in electronic form; electronic data interchange services; electronic mail services for data and voice; providing telecommunications connections to a global computer network or databases; transmission of messages, data and content via the internet and other communications networks; providing access to weblogs; access to content, websites and portals; Internet based telecommunication services.

Class 42: Cloud hosting provider services; application service provider [ASP], namely, hosting computer software applications of others; hosting computer sites [web sites]; creating, maintaining and hosting the websites of others; maintenance of websites and hosting on-line web facilities for others; hosting platforms on the Internet; hosting of digital content on the Internet; hosting of databases; server hosting; hosting of computerized data, files, applications and information; advice and development services relating to computer software; software design and development; design and development of networks; design, maintenance, development and updating of computer software; computer network services; computer security consultancy; computer security services for protection against illegal network access; data security services; computer system monitoring services; remote server administration; administration of mail servers; Internet security consultancy; IT security, protection and restoration; off-site data backup; remote computer backup services; information technology support services; computer software technical support services; support and maintenance services for computer software.

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.

Contested services in Class 38

The contested services in Class 38 are all telecommunication services. As such, they are all similar to the opponent´s installation, configuration and maintenance of software for IT networks and telephone systems as they have the same purpose. They usually coincide in producer and distribution channels. Furthermore, they are complementary.

Contested services in Class 42

The contested services in Class 42 are all IT services, namely, hosting services, website creation and maintenance services; software advice, design, maintenance, and development services, computer network services, computer security and consultancy services, server administration, computer backup services, and IT support and maintenance services. As such, they are at least similar to the opponent´s software development, programming and implementation, as they coincide at least in provider, 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.

In the present case, the services found to be at least similar are directed at the public at large (for example, electronic messaging) and at business customers with specific professional knowledge or expertise, namely IT professionals (for example, design and development of networks).

The degree of attention may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the services purchased.

c) The signs

Fullhouse IT
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).

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). This applies fully to the first verbal element of the earlier mark. In case of figurative marks, such identification of the elements may be facilitated by graphic means (in the case of the contested sign, the fact that the words ‘full’ and ‘host’ albeit joined together, are written in different colours).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the signs are meaningful for part of the public, namely English-speakers. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since as will be seen, there is more of a conceptual proximity than in other languages.

The English term ‘Full house’ in the contested sign forms a semantic unit and will be understood as, inter alia, ‘an audience that fills the venue for an event to capacity’ or ‘a poker hand with three of a kind and a pair’ as claimed by the applicant. The additional IT in the earlier mark will be understood as the abbreviation for ‘Information Technology’.

As concerns the contested mark, given the definitions above, ‘full host’ will most likely be perceived as a play on words between ‘full house’ and ‘host’, the latter referring to inter alia, ‘store (a website or other data) on a server or other computer so that it can be accessed over the Internet’.

As regards the distinctiveness of the elements, the verbal element ‘Full house’ as an expression is considered to be normally distinctive due to an absence of any correlation with the relevant services. Though ‘fullhost’ will be understood as a play on words ‘HOST’ is clearly related to the relevant services rendering it at least weak, while ‘IT’ will be descriptive and non-distinctive in relation to the relevant services. As to the applicant´s contention that the verbal element ‘FULL’ is laudatory and non-distinctive for the services at hand given its meaning of ‘complete’, the Opposition Division points out that the English speaking public will not separate this word since, in the case of the earlier mark it is part of an idiomatic expression. Indeed, in the contested sign it is part of a play on words and in any event it is clearly HOST which shows a relationship with the goods as pointed out above which renders ‘FULL’ more distinctive in this regard.

The contested sign, depicted in orange and grey, contains an additional figurative element consisting of a series of squares and rectangles arranged to form the heavily stylised letters ‘FH’. In terms of meaning and distinctiveness, this element will not be perceived by the public independently of the other verbal elements of the sign. As it precedes the word combination ‘fullhost’ it will be regarded merely as an acronym of that combination. This is because the acronym and the word combination together are intended to clarify each other and to draw attention to the fact that they are linked (15/03/2012, C-90/11 & C-91/11, Natur-AktienIndex / Multi Markets Fund, EU:C:2012:147, § 32, 34 and 40).

In any case, it is also true that 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). Additionally, the colours and the typeface used in the applicant’s mark are of an essentially decorative nature and will also have a lesser impact on the consumers’ perception of the mark and will not in any case obscure or camouflage the verbal components of the sign.

The signs have no elements that are more visually eye-catching than others and therefore have no dominant elements.

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.

Visually, the signs coincide in the letters ‘F-U-L-L-H-O-*-S’ and differ in the letters ‘U*E I-T’ of the earlier mark and the letter ‘T’ of the contested sign, as well as in the colours, stylization and figurative device of the contested sign. As said figurative device represents two letters, it is worth noting that both signs are composed of a verbal element beginning with ‘FULLHO-‘ and an additional element of two letters, albeit in inverted order. In addition, both signs consist of an element that is fairly long (fullhouse vs fullhost) thus the differences in just a couple of letters are not clearly identifiable. Further, it is also interesting to note that in both cases these verbal elements are combinations with a very similar overall visual impression.

As regards the different letter case used in the marks, as the earlier mark is a word mark, it is the word as such that is protected and not its written form. Therefore, differences in the use of lower-case or capital letters in such marks are irrelevant in the assessment of their similarities (27/01/2010, T-331/08, Solfrutta, EU:T:2010:23, § 16).

For these reasons, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound in the letters ‘F-U-L-L-H-O-S’ and differ in the letters ‘U-E I-T’ of the earlier mark and ‘F-H T’ of the contested sign. The signs have the same structure (although reversed) and number of syllables, which lends them a similar rhythm and intonation.

For all these reasons, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Due to the fact that the sums of the concepts of the elements they consist of allude to an overall similar concept of a full space/store (with the term ‘full host’ being a play on words on the term ‘full house’ as mentioned above). Bearing this in mind, both marks will be associated with an overall similar meaning.

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).

In the present case, the services are all at least similar, despite the arguments of the applicant as to the actual use made by the parties of the signs at issue, and taking into account the vast amount of documentary evidence filed by the opponent. Indeed, the comparison of the services must be based on the wording indicated in the respective lists of services. Any actual or intended use not stipulated in the list of services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

These services are directed at both the general and professional public whose level of attention varies from average to high. The distinctiveness of the earlier mark is normal and the signs are visually, aurally and conceptually similar to an average degree. In addition, both signs consist of an element that is fairly long (fullhouse vs fullhost) where the differences in just a couple of letters are not clearly identifiable and gives them a very similar overall visual impression, as well as.their overall meaning.

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).

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 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), especially given what has been said above about the play on words between the signs.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 342 164. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 16 342 164 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Vita VORONECKAITE

Helen Louise MOSBACK

Vanessa PAGE

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.