OPPOSITION No B 3 072 737

Mimecast Services Ltd., CityPoint, One Ropemaker Street, Moorgate, London EC2Y9AW, United Kingdom (opponent), represented by Brown Rudnick LLP, 8 Clifford Street, London W1S 2LQ, United Kingdom (professional representative)

a g a i n s t

Heinlein Support GmbH, Schwedter Str. 8/9b, 10119 Berlin, Germany (applicant), represented by Wegener & Adamaszek Rechtsanwälte Partg mbB, Friedrichstraße 115, 10117 Berlin, Germany (professional representative).

On 14/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 737 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 950 613 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 17 950 613 for the figurative mark , namely against all the goods and services in Classes 9, 38 and 42. The opposition is based on, inter alia, on European Union trade mark registration No 17 872 944 for the figurative mark . 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 17 872 944.

a) The goods and services

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

Class 9: Downloadable software, namely, software applications for mobile devices and mobile phones for consumers to access electronic data and information recorded in electronic media including e-mail and messaging, file archiving, email continuity and management.

Class 42: Software as a services (SAAS) featuring software for customers to access cloud platform and architecture for e-mail messaging life-cycle management, namely, repository of electronic data, archiving and retention, retrieval and recovery, email synchronization, email services continuity and management via a global computer network.

The contested goods and services are the following:

Class 9: Information technology and audiovisual equipment; Recorded content; Data storage devices; Computer networking and data communications equipment; Software; Databases (electronic); Data processing equipment and accessories (electrical and mechanical).

Class 38: Electronic mail services for data and voice; Voice message storage services; Providing on-line electronic bulletin board services and chat rooms; Video transmission services; Consultancy in the field of telecommunications; Electronic transmission of messages, data and documents; Providing online forums; Broadcasting services; Internet service provider services; Provision and rental of telecommunications facilities and equipment; Telephone and mobile telephone services; Rental of electronic mail-boxes; Secure e-mail services; Audiovisual communication services; Internet telephony services; Consultancy services relating to data communications; On-line communication services; Message sending; Online document delivery via a global computer network; Computer communication and Internet access; Provision of internet access services; Telecommunications consultancy; Electronic mail and messaging services; Network conferencing services; Relaying of messages [electronic]; Web site forwarding services; Network transmission of sounds, images, signals and data; Telephone and telecommunication services; Audio communications services; Telecommunication services; Facsimile transmission; Provision of access to content, websites and portals; Transfer of telephone or telecommunications calls; Teleconferencing and video conferencing services; Providing access to data in computer networks; Information about telecommunication; Electronic transmission of mail and messages; Voice and data transmission services.

Class 42: Software development, programming and implementation; Encryption, decryption and authentication of information, messages and data; Hosting services and software as a service and rental of software; Design of web pages; Data duplication and conversion services, data coding services; IT consultancy, advisory and information services; Electronic storage of archived e-mails; Development of systems for the processing of data; Rental of computer hardware and facilities; Providing temporary use of online non-downloadable software for word processing; Disaster recovery services for data communications systems; Infrastructure as a Service [IaaS]; Data back-up services; IT services; Platform as a service [PaaS]; Data security consultancy; Technical advisory services relating to data processing; Off-site data backup; Computer hardware development; Data security services; Creating and maintaining websites; Electronic data storage; Cloud computing; Application service provider services; Design and development of electronic data security systems; IT security, protection and restoration; Providing temporary use of non-downloadable business software.

An interpretation of the wording of the list of the opponent’s goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s specification 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 is a collection of data or computer instructions that tell the computer how to work and it is generally interpreted as including all kind of software applications. Therefore, the contested Software includes the opponent’s downloadable software, namely, software applications for mobile devices and mobile phones for consumers to access electronic data and information recorded in electronic media including e-mail and messaging, file archiving, email continuity and management. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Recorded content includes all kinds of content that can be recorded on a data carrier. As such, software falls under the category of recorded content. The opponent’s software applications for mobile devices and mobile phones for consumers to access electronic data and information recorded in electronic media including e-mail and messaging, file archiving, email continuity and management is also software. Therefore, these goods are identical.

The remaining contested Databases (electronic); information technology and audiovisual equipment; Data storage devices; Computer networking and data communications equipment; Data processing equipment and accessories (electrical and mechanical) are at least similar to a low degree to the opponent’s services in Class 42 as they may coincide at least in producer/provider, relevant public and distribution channels.

Contested services in Class 38

All the services offered by the applicant refer to the process of exchange of information over significant distances by electronic means (see 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 51). It includes the management, control, or operation of telecommunications systems or services, e.g., Electronic transmission of messages, data and documents; Providing online forums; Broadcasting services; Internet service provider services (30/04/2018, R 1554/2014-5, webnode (fig.) § 38). Furthermore, the contested consultancy and information services relating to data communication or telecommunications are similar, or even identical, to the services to which they relate. Therefore, the applicant´s services involving services of telecommunication and the opponent’s services in Class 42 have been converging and nowadays it is difficult to draw a clear line between the two. The services under comparison may have the same ultimate purpose of allowing communication. Additionally, they may coincide in providers and distribution channels. Furthermore, some of them are also complementary (the opponent´s email services continuity and the contested electronic mail services for data and voice). Therefore, they are at least similar to a low degree.

Contested services in Class 42

All the contested services in this Class mainly include services provided by professionals such as engineers or computer programmers in relation to various IT services. Therefore, they are at least similar to a low degree to the opponent’s services in Class 42. These services may coincide 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 goods and services found to be identical and similar to various degrees are directed at the public at large and at professionals in IT and telecommunication field.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase and their price.

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).

Both signs are figurative marks, composed of a rather standard representation of the small letter ‘m’. The contested sign contains an additional figurative component depicted in green.

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). The stylisation of the letters in both signs is minimal.

As suggested by the applicant, it cannot be excluded that the figurative element preceding the letter ‘m’ in the contested sign will be perceived by the significant part of the relevant public as an envelope. Bearing in mind the contested goods and services, this figurative element is weak or even non-distinctive for some of the contested services such as Electronic mail services for data and voice, Electronic storage of archived e-mail, and taking into account the abovementioned principle, this figurative element is less relevant/important for the rest of the goods and services such as ‘recorded content’ in Class 9 or ‘design of web pages’ in Class 42 as it will not detract consumers’ attention from the verbal element.

The common verbal element, the single letter ‘m’, will be understood as such by the relevant public. According to the well-established case-law, single letters per se are not devoid of any distinctive character. The letters ‘m’ in each sign will not be associated with any precise meaning in connection with the goods and services in question, by the relevant public, and, therefore, they have an average degree of inherent distinctive character.

The marks have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the representation of the letter ‘m’ which in both marks is rather standard. The inherent distinctiveness of the additional figurative element of the contested mark is weak/non-distinctive or less relevant in relation to the goods and services in question, as analysed above. In any case this element has lesser impact as an indicator of origin than the verbal element ‘m’, as the public will perceive, read and pronounce this latter element as the main badge of origin contained in the sign. Likewise, consumers will not attribute much trade mark significance to the fact that the contested sign is depicted in green, as the use of basic colours to depict commercial signs is a common market practice. It follows that the public will perceive the verbal element ‘m’ as the main badge of origin contained in the contested sign.

Therefore, the signs are similar to a higher than average degree.

Aurally, the signs are identical as they coincide in the letter ‘m’ and purely figurative components are not subject to a phonetic comparison.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs convey the same concept of the letter ´m´. The conceptual difference will be limited to a figurative element of the contested sign; however its inherent distinctiveness is weak/non-distinctive or less relevant, in any case. Consequently, the signs are conceptually similar to a higher than average degree.

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

The global appreciation of the likelihood of confusion, as far as it concerns the visual, aural or conceptual similarity of the trade marks at issue, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 47; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Moreover, it follows from the case-law that marks containing or reproducing an element of the other may be considered, at least to that extent, similar (08/09/2010, T-152/08, Scorpionexo, EU:T:2010:357, § 66 et seq.).

The goods and services are identical and similar to various degrees. The level of attention of the relevant public varies from average to high.

The distinctiveness of the earlier mark is normal.

The marks are visually similar to a higher than average degree and aurally identical. Taking into account the limited impact of the figurative component of the contested sign, the marks are conceptually similar to a higher than average degree.

The signs coincide in the single letter ‘m’. Furthermore, the coincidences between the signs refer also to the representations of the letters themselves. They show similarities due to the shape of the lower-case letter ‘m’, whereas the use of a colour (green) in the contested sign is not a significant differentiating feature. These differences between the signs are, as explained above, of a minor importance with the result that they are insufficient to outweigh their similarities.

The figurative component of the contested sign will have a limited impact, if any on the assessment of the likelihood of confusion in the present case.

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).

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 applicant argues that there are a lot of trade marks containing a singular letter ‘m’ registered in the register of the Office and that all of them are easily distinguishable. The applicant evokes some of them in the observations. In this regard, the Opposition Division has no doubt that in another case scenario, as suggested by the applicant in the observations, the relevant public would be able to differentiate between short signs consisting of a single letter, in particular, when these letters are depicted in a very different and/or sophisticated manner in them. This is not the case under the present dispute. As mentioned above, the representation of the letters in both signs is very basic and the impact of the additional figurative element of the contested sign is limited, if any. Additionally, the presence of several registrations is not per se sufficient to conclude that the mark is weak as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to trade marks that include the single letter ‘m’. Under these circumstances, the applicant’s claim must be set aside.

Furthermore, the applicant argues that the opponent did not use the earlier mark in question. As far as this argument is concerned, the Opposition Division wishes to remind that the Office does not inquire ex officio whether the earlier mark has been used. Such examination takes place only when the EUTM applicant makes an explicit request for proof of use. Such a request, if the legal requirements are met, triggers the procedural and substantive consequences laid down in the EUTMR, EUTMDR and EUTMIR. In the present case, the applicant did not require from the opponent to submit the evidence of use in relation to the earlier trade marks on which the opposition is based. In any case, they were not subject to a use requirement yet (both registered in 2018).

Therefore, in the absence of convincing arguments the arguments of the applicant must be rejected as unfounded.

Consequently, taking into account the aforementioned, it is considered that there is a strong coincidence between the signs with a decisive impact. The similarities pointed out above are clearly enough to outweigh the differences between the signs and they will lead the relevant public, at least, to associate the signs. Therefore, there is a likelihood of confusion including a likelihood of association between the signs in question, also in relation to the lowly similar goods and services since there is nothing of a higher trade mark significance that would clearly distinguish the contested sign from the earlier mark. In the present case, it is likely that the contested application will be perceived as a new version of the earlier mark, as such re-branding operations are common in the market.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 872 944. It follows that the contested trade mark must be rejected for all the contested goods and services, including also those which are similar to a low degree to the opponent’s goods and services.

As the earlier European Union trade mark registration No 17 872 944 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

Gueorgui IVANOV

Monika CISZEWSKA

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.