OPPOSITION No B 3 078 507

Element Brand Holding, LLC, 6423, City West Parkway Eden Prairie, 55344 Minnesota, United States of America (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003 Alicante, Spain (professional representative)

a g a i n s t

Sébastien Léger, 151 Allée du Fier, 74370 Annecy, France (applicant).

On 09/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 507 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 927 514 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 17 927 514 ‘element 13’ (wordmark). The opposition is based on inter alia, European Union trade mark registration No 17 888 004 ‘ELEMENT’ (wordmark). 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 application No 17 888 004.

a) The goods and services

The goods and services on which the opposition is based are – amongst others - the following:

Class 09: Computer software for use in generating visual media, graphic images, photographs, illustrations, digital animation, video clips, film footage and audio data; computer software for use in transmitting and receiving data over computer networks and global communication networks; computer software for managing communications and data exchange among and between devices; computer software that enables the storing, archival, retrieval, viewing, sharing, enhancement, management, organization, searching, ranking, scanning, distributing, publishing, editing, manipulating, compositing, annotating, ordering and printing of digital images; wireless transmitters, digital media and satellite receivers, and computer network interface devices; Computer hardware, namely, wireless network extenders; wireless computer peripherals; computer hardware and software for use in connecting and operating wireless digital media systems, components, sound and video equipment and digital media networks; computer software for wireless content delivery; software for processing images, graphics and text; computer software that enables the storing, archival, retrieval, viewing, sharing, enhancement, management, organization, searching, ranking, scanning, distributing, publishing, editing, manipulating, compositing, annotating, ordering, and printing of digital images; augmented reality software for use in mobile devices for integrating electronic data with real world environments for the purpose of visualizing changes in the appearance of faces, body features, clothing or accessories; virtual reality software for the purpose of visualizing changes in the appearance of faces, body features, clothing or accessories; computer software for the data basing, visualization, manipulation, virtual reality immersion and integration of geographic information with on-line member communities; computer software for personalized, interactive television programming and accompanying manuals distributed therewith; computer software for use in generating, displaying and manipulating visual media, graphic images, photographs, illustrations, digital animation, video clips, film footage and audio data; computer software for use in accessing, viewing and controlling streaming and static audiovisual content over digital media streaming devices; computer software for accessing, transmitting and displaying audiovisual data between digital media streaming devices and televisions and monitors; remote controls for computers.

Class 42: Providing temporary use of online, non-downloadable software for use in personalized, interactive television programming and accompanying manuals distributed therewith; providing temporary use of online, non-downloadable software for use in generating, displaying and manipulating visual media, graphic images, photographs, illustrations, digital animation, video clips, film footage and audio data; providing temporary use of online, non-downloadable software for use in accessing, viewing and controlling streaming and static audiovisual content over digital media streaming devices; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems.

The contested goods and services are the following:

Class 09: Computer software for implementing a computer programming language; Computer software for use as an application programming interface (API); Computer software development tools; Libraries of computer software for performing general purpose computations, manipulating data collections, transforming data, input/output, communications, graphics display, modelling and testing; Operating systems for computer software (systems comprising libraries of computer software) for performing general purpose computations, manipulating data collections, transforming data, input/output, communications, graphics display, modelling and testing; All the aforesaid goods being for use in the fields of artificial intelligence, deep learning, high performance computing, distributed computing, virtualisation and machine learning.

Class 42: Providing non-downloadable computer software, namely computer software for the implementation of a programming language, computer software development tools, libraries of computer software for general purpose calculations, manipulation of data collections, transformation of data, input/output, communications, graphics display, modelling and testing; Providing non-downloadable computer software, namely operating systems comprising libraries of computer software for use in general purpose computations, manipulation of data collections, transformation of data, input/output, communications, graphics display, modelling and testing; Providing non-downloadable computer software for use as application programming interfaces (APIs); All the aforesaid services relating to the fields of artificial intelligence, deep learning, high performance computing, distributed computing, virtualisation and machine learning.

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 and opponent’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.

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 09

All the contested goods in this class are various computer software, computer software libraries and operating systems for computer software which are used in the fields of artificial intelligence, deep learning, high performance computing, distributed computing, virtualisation and machine learning. These goods are at least similar to the opponent`s computer software that enables the storing, archival, retrieval, viewing, sharing, enhancement, management, organization, searching, ranking, scanning, distributing, publishing, editing, manipulating, compositing, annotating, ordering, and printing of digital images which is also software for various use which can also be the one which is covered by the applicant`s software. Therefore these goods are of the same nature, they are directed at the same public and will be distributed through the same sales channels. Consumer can presume that these goods come from the same undertakings.

Contested services in Class 42

All the contested services in this class are providing non-downloadable computer software in the fields of artificial intelligence, deep learning, high performance computing, distributed computing, virtualisation and machine learning. These services are at least similar to the opponent`s providing temporary use of online, non-downloadable software for use in generating, displaying and manipulating visual media, graphic images, photographs, illustrations, digital animation, video clips, film footage and audio data which also covers providing of non-downloadable software for various use which can also be the one which is covered by the applicant`s services. Therefore these services have a similar purpose, they are directed at the same public and will be distributed through the same sales channels. Consumer can presume that these services come from the same undertakings.

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 business customers with specific professional knowledge or expertise.

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

c) The signs

ELEMENT	element 13
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 word ‘element’ contained in both signs has several meanings (e.g. a part or aspect of something abstract, especially one that is essential or characteristic, see: https://www.lexico.com/en/definition/element) and will be understood by the European Union public since it is similar or identical in most European languages, e.g. ‘elemento’ in Spanish, Italian and Portuguese, ‘element’ in German, Polish, Dutch, French, Danish, ‘elementet’ in Swedish etc. Since it has no meaning for the goods and services in question it is distinctive.

The number ‘13’ contained in the contested sign will be perceived as such and is also distinctive.

Visually and aurally, the signs coincide in the word ‘element’ and they differ in the number ‘13’. Both signs are word marks. Consequently, the terms themselves are subject to protection, irrespective of the use of lower case or upper case (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43; 25/06/2013, T-505/11, dialdi, EU:T:2013:332, § 65).

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning concerning the word ‘element’ and only differ in the concept of the number ‘13’ of the contested sign, the signs are conceptually highly 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 goods and 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).

The goods and services were found to be at least similar and the signs are visually, aurally and conceptually highly similar. The earlier sign is completely contained in the contested sign which only contains the additional number ‘13’.

Due to the visual, aural and conceptual high similarity and the absence of any dominant or non‑distinctive elements in the signs, a likelihood of confusion exists.

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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 888 004. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 17 888 004 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights 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

Jakub MROZOWSKI

Reiner SARAPOGLU

Dorothee SCHLIEPHAKE

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.