OPPOSITION No B 3 069 015

SAP SE, Dietmar-Hopp-Allee 16, 69190 Walldorf, Germany (opponent), represented by Baker & Mckenzie, Bethmannstr. 50-54, 60311 Frankfurt/Main, Germany (professional representative)

a g a i n s t

Hanalytics Pte. Ltd, 151 Lorong Chuan #03-01c –, 556741 New Tech Park, Singapore (applicant), represented by Barzanò & Zanardo Milano S.p.A., C.So Vittorio Emanuele II, 61, 10128 Torino, Italy (professional representative)

On 18/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 015 is upheld for all the contested goods and services, namely:

Class 9: Computer programs, recorded; computer software, recorded; computer game software; computer; computer software applications, downloadable; computer programs [downloadable software]; mobile phone software applications, downloadable; data processing apparatus; computer peripheral devices; processors [central processing units].

Class 42: Research and development of new products for others; computer programming; outsource service providers in the field of information technology; technical research; software as a service [SaaS]; information technology [IT] consultancy; computer software design; updating of computer software; maintenance of computer software; computer software consultancy.

2. European Union trade mark application No 17 932 902 is rejected for all the contested goods and services It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 932 902 , namely against all the goods and services in Classes 9 and 42. The opposition is based on, inter alia, international trade mark registration No 1 210 788 designating the European Union for the word mark ‘HANACLOUD’. 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 international trade mark registration No 1 210 788 designating the European Union for the word mark ‘HANACLOUD’.

a) The goods and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images; computers; software; data processing equipment.

Class 42: Design and development of computers and software; hosting of computer sites (web sites); IT programming services; consultancy in the field of computer systems analysis; scientific and technological services and research and design relating thereto.

The contested goods and services are the following:

Class 9: Computer programs, recorded; computer software, recorded; computer game software; computer; computer software applications, downloadable; computer programs [downloadable software]; mobile phone software applications, downloadable; data processing apparatus; computer peripheral devices; processors [central processing units].

Class 42: Research and development of new products for others; computer programming; outsource service providers in the field of information technology; technical research; software as a service [SaaS]; information technology [IT] consultancy; computer software design; updating of computer software; maintenance of computer software; computer software consultancy.

Contested goods in Class 9

Computer is identically contained in both lists of goods, including its plural form.

The contested computer programs, recorded; computer software, recorded; computer game software; computer software applications, downloadable; computer programs [downloadable software]; mobile phone software applications, downloadable are contained in the opponent’s broad category of software. These goods are identical.

The contested data processing apparatus; processors [central processing units] are included in, or at least overlap with, the opponent’s data processing equipment. They are also identical.

The contested computer peripheral devices overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images to the extent that these may be various cameras, microphones, speakers, etc. These goods are identical.

Contested services in Class 42

The contested computer programming; outsource service providers in the field of information technology; software as a service [SaaS]; information technology [IT] consultancy; computer software design; updating of computer software; maintenance of computer software; computer software consultancy are included in one of the broad categories of the opponent’s design and development of computers and software; hosting of computer sites (web sites) or, the general, IT programming services. They are identical.

The contested research and development of new products for others; technical research are included the opponent’s scientific and technological services and research and design relating thereto. These services are consequently identical.

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 are directed at the public at large, as well as 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

HANACLOUD
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 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.

As regards the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving it, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). At this stage, it is important to note that at least some part of the consumers will perceive the initial part ‘HANA’ as a meaningful word denoting a female name in some Slavic-speaking countries, namely among the Czech and Slovak speakers (see a further reference at https://forebears.io/forenames/hana, available online on 16/12/2019). To that extent, the Opposition Division finds it appropriate to focus the further assessment of the perception of those consumers.

Consequently, the earlier mark will be perceived by the public as the combination of the verbal elements ‘HANA’, as a popular female forename, and ‘CLOUD’, as a word commonly used in the respective commercial field to designate on-demand availability of computer system resources, especially data storage and computing power, without direct active management by the user. While the first verbal element will be endowed with a normal degree of distinctiveness, the second word ‘CLOUD’ will be seen of weaker than average distinctiveness in relation to any of the goods and services to the extent that they are all IT-related services and computing goods.

As to the contested sign, it has to be considered that, provided its initial position, when encountering it on the market, the Czech and Slovak consumers may firstly perceive the above referenced female name ‘Hana’. Nevertheless, upon reading the rest of the contested sign, and given the type of goods and services concerned, the said public may also see a reference to the English word ‘analytics’, which will be most likely familiar to the public due to its Greek or Latin origin, as well as because of the use of similar equivalents in the relevant languages (i.e. ‘analytika‘). Moreover, taking note of the nature of the goods and services, this word will be perceived as ‘the process of analysing data in order to identify significant trends’ or more particularly, in relation to the goods in question as ‘the systematic computational analysis of data or statistics’ and to that extent, its distinctiveness is rather reduced when seen in the context of these goods/services. As result, altogether, the contested sign may be seen by consumers as a play of words between the above referred female name and the word ‘analytics’.

The contested sign additionally contains a fanciful figurative device composed of different colours, which may resemble a hot air balloon at least to some of the consumers. In any event, taken account of the fact that when signs consist of both verbal and figurative components, 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). Lastly, the contested sign has no elements that could be considered more dominant (visually eye-catching) than other elements.

As the opponent correctly points out, 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 and aurally, the signs coincide in the verbal part ‘HANA’, present in the beginning of the contested sign and of the earlier mark, and in the sounds thereof. However, they differ in the additional parts ‘cloud’ and ‘lytics’ following them, and the sounds thereof, as well as in the figurative element and stylisation of the contested sign. Having considered the different factors above, even though the distinctiveness of the elements composing the marks may slight vary, as has been indicated above, the signs will be overall visually and aurally similar to below an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both signs will refer to the same meaning produced by the coinciding name, and considering the weakness of their differing elements, the signs are conceptually similar to an average degree.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but, apart from providing URL addresses leading to its official home pages, did not file any factual evidence in order to prove such a claim. However, in accordance with Article 95(1) EUTMR, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. That provision relates, inter alia, to the factual basis of decisions by the Office, that is, the facts and evidence on which those decisions may be validly based. It is not for the Office decision-taking bodies to search the opponent’s website for the relevant data to prove the claims to which opponent refers (04/10/2018, T‑820/17, Alfrisa (fig.) / Frinsa F (fig.), EU:T:2018:647, § 61-63).

For the sake of completeness, the Opposition Division notes that online evidence is admissible only in a limited number of events, as provided in Article 7(3) EUTMDR, and in particular in relation to substantiation of earlier national rights and proving the content of the national law. In all other cases, the materials, even if available online, should be provided to the Office in a physical form (as printouts, screenshots or recorded on a digital carrier or in another appropriate form). Accordingly, for the purposes of the present analysis the information available on the links will not be taken into account.

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

The goods and services in the present case are identical and target both professional public and public at large, whereas the degree of attention will vary from average to high, as has been established above; the earlier mark’s distinctiveness is considered to be average as a whole.

The signs are considered to be visually and aurally similar to below an average degree to the extent that they coincide in their beginnings, sharing identical four letters, and moreover, they are conceptually similar to an average degree due to the coinciding name. Indeed, while the earlier mark will be generally seen as the combination of the verbal elements ‘HANA’ and ‘CLOUD’, there might be some interpretations on the perception of the contested sign. In any event, the fact remains that, seen from the perspective of the relevant Slovak and Czech public, the contested sign will still include the forename ‘HANA’ and to that extent, despite their overlapping parts, both concepts ‘HANA’ and ‘ANALYTICS’ may be equally present.

In that sense, account in taken of the fact that 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, it is true that consumers will not directly confuse the marks at hand since they bear additional elements and concepts (as described above). However, in the context of identical goods and services, it cannot be completely ruled out that at least a part of the public will associate the marks with the same commercial origin, whereas they both have the same structure of graphical representation, the distinctive verbal part ‘HANA’ positioned in first place, followed by, or incorporating along, an additional component of a weaker character. Despite the fact that the public may perceive the word ‘analytics’ in its entirety in the contested sign, consumers may also see the play of words between ‘HANA’ and ‘ANALYTICS’ and assume that the contested sign is a different mark belonging to the opponent’s portfolio. 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).

Moreover, 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). As has been said above, both parties will feature their marks on identical products, which brings the gap between the signs closer together.

Additionally, it has to be considered that the applicant did not submit any observations to provide a different line of reasoning and bring forward arguments excluding the possible likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the public, in particular on the part of the public for whom the name ‘HANA’ naturally involves a connotation. 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 international trade mark registration No 1 210 788 designating the European Union for the word mark ‘HANACLOUD’. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right examined above 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 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

Sofia SACRISTAN MARTINEZ

Manuela RUSEVA

Jakub MROZOWSKI

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.