OPPOSITION No B 3 078 352

Allegro.PL spółka z ograniczoną odpowiedzialnością, Grunwaldzka 182, 60-166, Poznań, Poland (opponent), represented by Bartosz Mariusz Fert, ul. Mikołaja Kopernika 4a/16b, 61-880, Poznań, Poland (professional representative)

a g a i n s t

Masterstudies AS, Rolfsbuktveien 4D, 1364 Fornebu, Norway (applicant), represented by Angelica Coppini, 137 Spinola Road, STJ3011 St. Julians, Malta (professional representative).

On 27/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 352 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 992 811 , namely against all the goods and services in Classes 9, 35 and 38. The opposition is based on

 Polish trade mark registration No 317 832  ,

 Polish trade mark registration No 322 065  ;

 Polish trade mark registration No 316 809 ;

 Polish trade mark registration No 315 529 ‘ALLEGRO SMART’ (word mark);

 Polish trade mark registration No 316 402 ‘ALLEGRO SMART!’ (word 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.

a) The goods and services

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

Polish trade mark registration No 317 832 :

Class 9: Computer software relating to the operation of an online marketplace; Mobile applications relating to the operation of an online marketplace.

Class 35: Operating an online marketplace for the negotiation of commercial transactions between third parties in the selling and purchasing of goods; providing online advertising space for others; classified advertising services; providing online classified advertising space; advertising and promotional services; price comparison services; Marketing services; Loyalty, incentive and bonus program services; Business management assistance consisting in providing an Internet website where third parties can offer for sale and purchase goods and services, list orders, indicate order status, process purchase orders, conclude contracts and carry out transactions; Online commerce services relating to online auctions and online rating thereof; promotional services consisting in providing a benefits package on an online commerce website; Promotional services consisting in providing a benefits package on an online commerce website, concerning in particular: delivery of goods, parcel tracking, instalment payments, discounts or improving service quality; Information services relating to the aforesaid services.

Class 42: Computer services consisting in providing a search engine for goods on a website; Creating and maintaining, on behalf of others, of online computer marketing systems; Software as a service (SaaS) related to operating online shops.

Each of the remaining earlier trade marks covers exactly the same goods and services.

The contested goods and services are the following:

Class 9: Computer software applications, downloadable; Computer programmes [programs], recorded; Computer programs [downloadable software]; Interfaces for computers.

Class 35: Computerized file management; Administrative processing of purchase orders; Business inquiries; Business research; Pay per click advertising; Business management assistance; Commercial information agencies; Data search in computer files for others; Professional business consultancy; Negotiation and conclusion of commercial transactions for third parties; Compilation of information into computer databases; Commercial intermediation services; Marketing; Marketing research; Marketing studies; On-line advertising on a computer network; Updating of advertising material; Updating and maintenance of data in computer databases; Public relations; Publication of publicity texts; Publicity agencies; Bill-posting; Publicity; Sales promotion for others; Search engine optimization; Sponsorship search; Systemization of information into computer databases; Dissemination of advertising matter.

Class 38: Computer aided transmission of messages and images; Electronic bulletin board services [telecommunications services]; Transmission of digital files; Communications by telephone; Providing user access to global computer networks; Providing telecommunications connections to a global computer network; Providing access to databases; Providing access to portals on the Internet; Providing access to multimedia content online.

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 computer software applications, downloadable; computer programmes [programs], recorded; computer programs [downloadable software] overlap with the opponent’s computer software relating to the operation of an online marketplace. They are identical.

The contested interfaces for computers are shared boundaries across which separate components of systems may exchange information. The interfaces are likely to either consist of or, at least, include software elements. The contested interfaces for computers and the opponent’s computer software relating to the operation of an online marketplace have strong similarities in their natures, purposes and method of use. They can coincide in producers and distribution channels. Therefore, the contested interfaces for computers are at least similar to the opponent’s computer software relating to the operation of an online marketplace.

Contested services in Class 35

The contested pay per click advertising; marketing; marketing research; marketing studies; on-line advertising on a computer network; updating of advertising material; public relations; publication of publicity texts; publicity agencies; bill-posting; publicity; sales promotion for others; dissemination of advertising matter are included in, or overlap with, the broad category of the opponent’s advertising and promotional services. They are identical.

The contested sponsorship search are considered similar to the opponent’s advertising and promotional services; information services relating to the aforesaid services. The services are distributed through the same channels to the same relevant public. They also come from the same undertakings.

The contested business inquiries; business research; business management assistance; professional business consultancy include, as broader categories, or overlap with, the opponent’s business management assistance consisting in providing an Internet website where third parties can offer for sale and purchase goods and services, list orders, indicate order status, process purchase orders, conclude contracts and carry out transactions; information services relating to the aforesaid services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested negotiation and conclusion of commercial transactions for third parties; commercial intermediation services are considered at least similar to low degree to the opponent’s business management assistance consisting in providing an Internet website where third parties can offer for sale and purchase goods and services, list orders, indicate order status, process purchase orders, conclude contracts and carry out transactions; information services relating to the aforesaid services. Negotiation and settlement of contracts is more of a business intermediary service: a third party puts sellers and buyers of something in contact, negotiates between them and gets commission for such service. Both services also are aimed at supporting or helping other businesses to do business or to improve their businesses. To that extent such services may have the same purpose. Companies providing business management assistance service may also provide such services as negotiations of business contracts for third parties. Finally, both services target the same public.

The contested commercial information agencies are considered at least similar to the opponent’s business management assistance consisting in providing an Internet website where third parties can offer for sale and purchase goods and services, list orders, indicate order status, process purchase orders, conclude contracts and carry out transactions; information services relating to the aforesaid services. The services have the same purpose of assisting in the management of a business. They are directed at the same public and distributed through the same channels. Moreover, they come from the same undertakings.

The contested computerized file management; administrative processing of purchase orders; data search in computer files for others; compilation of information into computer databases; updating and maintenance of data in computer databases; search engine optimization; systemization of information into computer databases are considered at least similar to a low degree to the opponent’s business management assistance consisting in providing an Internet website where third parties can offer for sale and purchase goods and services, list orders, indicate order status, process purchase orders, conclude contracts and carry out transactions; information services relating to the aforesaid services. These services have the same purpose (helping other businesses in running their activities), target the same public and coincide in providers.

Contested services in Class 38

The contested computer aided transmission of messages and images; electronic bulletin board services [telecommunications services]; transmission of digital files; communications by telephone; providing user access to global computer networks; providing telecommunications connections to a global computer network; providing access to databases; providing access to portals on the internet; providing access to multimedia content online are various telecommunication services and are considered similar to the opponent’s software as a service (SaaS) related to operating online shops in Class 42. Although telecommunications principally involves putting one party in contact with another, software as a service can be the delivery model for telecommunications apps, which would be indivisible from the service itself. Nowadays the fields of telecommunications and IT are intricately linked together, as telecommunicating necessarily requires IT software and most of the software involves interactive functions or the possibility of remote access. Therefore, the purpose of the services is the same. Moreover, these services are indispensable to each other and are, therefore, complementary. They have the same distribution channels and 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 identical and similar to various degrees are partly directed at business customers with specific professional knowledge or expertise, and partly at the general public and business customers (e.g. computer software applications, downloadable).

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

c) The signs

Polish trade mark registration No 317 832	Contested sign

The relevant territory is Poland.

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 ‘SMART’, present in both signs, is a term commonly used within the field of information technology and computing as well as in the telecommunications and electronics sector and is understood in this context as referring to intelligent (08/11/2017, R 2430/2016-4, smartID+, § 18). Despite being an English term, it is widely used internationally and, therefore, it can be reasonably assumed that relevant consumers of the goods and services at hand have been exposed to the use of this word and be fully aware of its meaning. Indeed, the word ‘SMART’ is commonly used in Poland in words such as smartfon (meaning smartphone) or smart TV, and in any case, the relevant public in relation to many of the goods and services at hand is composed of professionals whose knowledge of English is higher and who are expected to understand at least those English words related to their field of business.

Thus, the word ‘SMART’ is considered non-distinctive in relation to all the goods and services at hand since it indicates that the goods in Class 9 and the services in Classes 35, 38 and 42 apply modern intelligent technologies and provide innovative solutions, or that they operate based on such technologies and solutions (see by analogy 05/02/2015, T-499/13, SMARTER SCHEDULING, EU:T:2015:74 § 32-33).

As regards the word ‘HUB’ it will be also understood, by at least part of the relevant public, as a device for connecting computers in a network. The distinctiveness of this word is limited in relation to goods in Class 9 since it indicates that the goods in Class 9 are intended to be used with hubs. The distinctiveness of ‘HUB’ is also limited in relation to the services in Class 38, since hubs are used in telecommunication networks. For the rest of the public, and for the remaining services, the word is normally distinctive.

The figurative elements of both signs have no meaning in relation to the goods and services at hand and are considered distinctive.

The earlier sign has no elements that could be considered dominant (visually eye-catching), while the words ‘SMART HUB’ are dominant in the contested sign.

Visually, the signs are similar to the extent that they coincide in the word ‘SMART’ which is, however, considered non-distinctive for all the goods and services at issue. The signs are also similar to the extent that they have similar colours and colour pattern (violet/blue followed by orange). The signs differ in their remaining elements: the figurative representation of the exclamation mark in the earlier sign and the word ‘HUB’ as well as the figurative element in the contested mark.

Therefore, the signs are considered to be visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the non-distinctive word ‘SMART’ and differs in the sound of the word ‘HUB’ of the contested sign.

Considering that the word ‘SMART’ is non-distinctive, but also that it is the only element of the earlier sign to be pronounced, the signs are considered aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. Even though, the signs will both refer to something intelligent because of the presence of the word ‘SMART’, the signs are conceptually similar only to a low degree since the coincidence lies in a non-distinctive element.

The opponent has also based its opposition on the following earlier trade marks:

 Polish trade mark registration No 322 065  ;

 Polish trade mark registration No 316 809 ;

 Polish trade mark registration No 315 529 ‘ALLEGRO SMART’ (word mark);

 Polish trade mark registration No 316 402 ‘ALLEGRO SMART!’ (word mark);

The other earlier rights invoked by the opponent are even less similar (if not dissimilar) to the contested mark. This is because they all contain additional word ‘ALLEGRO’ which is not present in the contested trade mark and which significantly differentiates the signs visually, aurally and conceptually. The word ‘ALLEGRO’ refers to a pace in music and is not descriptive, allusive, laudatory or otherwise weak in relation to the goods and services at hand. It is considered distinctive. Moreover, in three of the earlier trade marks, it is placed before the coinciding element ‘SMART’ – at the beginning of the sign – where consumers tend to focus their attention.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade marks enjoy a high degree of recognition among the relevant public in Poland in connection with all the goods and services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 Extracts from TmView for the trade marks on which the opposition is based, and other trade marks of the opponent.

 Extracts from TmView showing various trade marks, other than those of the opponent, containing the word ‘SMART’.

 Opponent’s brand book for the following trade mark , showing the size and proportions of the trade mark, as well as acceptable variations.

 Screenshots from WebArchive showing the opponent’s website and the following trade marks , , , , , , , , , , and .

 Printout from Google Analytics showing the visits of the opponent’s website for 01-30/09/2018.

 Screenshots of Alexa ranking the opponent’s website as 5^th among Poland’s most used online websites.

 Examples of online advertisements showing the following trade marks: , .

 Printouts from the opponent’s Facebook, YouTube, Instagram and Twitter showing the following trade marks: and its colour variations, , .

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

Firstly, as regards the earlier trade mark No 317 832, , it only appears few times in the evidence, namely in only few extracts of the opponent’s website, and always together with other, much more visible trade marks of the opponent, such as (and its variations) or appearing on the same website. Since the statistics of Google Analytics and the ranking of Alexa refer to the visits of the opponent’s website in general, the evidence does not allow to deduce to what extent the relevant public was exposed to the trade mark on which the opposition is based.

As regards the remaining earlier trade marks , , ‘ALLEGRO SMART’ (word mark) and ‘ALLEGRO SMART!’ (word mark) on which the opposition is also based, there is some more evidence showing the following trade marks: , , and , namely the extracts from the opponent’s website and social media as well as some examples of online advertisements. This is, however, insufficient to demonstrate that these earlier trade marks enjoy a high degree of recognition among the relevant public in Poland in connection with any of the goods and services for which they are registered. The evidence submitted by the opponent does not indicate, for example, the sales volumes, the market share or the extent to which the trade marks on which the opposition is based have been promoted. The majority of the evidence refers to the trade mark , which, as such, is not a basis in this opposition, and which contains a distinctive word ‘ALLEGRO’ but does not coincide in any verbal element with the contested sign. Consequently, it is considered that the evidence does not show that the trade marks are known by a significant part of the relevant public in Poland. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that the marks have acquired the enhanced distinctiveness for any of the goods or services at hand.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the earlier marks, taken as a whole, have 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 these earlier marks must be seen as normal, despite the presence of a non‑distinctive word ‘SMART’ in the marks, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services have been found identical and similar to various degrees. The earlier Polish trade mark registration No 317 832 has been found visually, aurally and conceptually similar only to a low degree. The remaining earlier marks on which the opposition is based are considered even less similar to the contested sign, for the reasons stated above. The distinctiveness of the earlier marks is considered normal.

The signs coincide in the verbal element ‘SMART’ which is however considered non-distinctive in relation to all the goods and services. The lack of distinctive character of the term ‘SMART’ has to be taken into account since the relevant public will not pay much (or any ) attention to this descriptive term, the only coinciding verbal element of the conflicting signs. The remaining verbal and figurative elements of the signs are totally different.

Bearing in mind the aforesaid, the Opposition Division considers that, in the context of a global appreciation, the differences between the trade marks in conflict take precedence over the similarities demonstrated and are such that they prevent a likelihood of confusion between the trade marks, in spite of the identity or similarity of the goods and services in question.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Katarzyna ZANIECKA

Anna BAKALARZ

Begoña URIARTE VALIENTE

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.