OPPOSITION No B 3 096 461

Uwe Czaia, Kleiner Ort 1, 28357 Bremen, Germany (opponent), represented by Büsing, Müffelmann & Theye Rechtsanwälte in Partnerschaft mbB, Marktstr. 3, Börsenhof C, 28195 Bremen, Germany (professional representative)

a g a i n s t

China Mobile International Limited, 29/F & 30/F, Tower 1, Kowloon Commerce Ctr.,51 Kwai Cheong Road, Kwai Chung, NT, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by Aomb Polska sp. z o.o., Emilii Plater 53, 21st floor, 00113 Warszawa, Poland (professional representative).

On 16/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 461 is upheld for all the contested services.

2. European Union trade mark application No 18 063 400 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 18 063 400 for the figurative mark , namely against all services in Class 38. The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 476 996 for the word mark ‘M-Cloud’. 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 1 476 996, designating the European Union.

a) The goods and services

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

Class 9: Web-based software for marketing and media, including procedures for determining the data necessary therefor; software for marketing and media stored on data carriers, including the procedures for determining the data necessary therefor.

Class 42: Development of software for marketing and media; developing and creating programs for data processing, in particular software for marketing and media, including procedures for determining the data necessary therefor; information technology [IT] consulting.

The contested services are the following:

Class 38: Rental of access time to global computer networks; providing access to databases; communications by telegrams; communications by telephone; communications by cellular phones; communications by computer terminals; communications by fiber optic networks; electronic bulletin board services [telecommunications services]; information about telecommunication; providing internet chatrooms; message sending; news agency services; providing online forums; satellite transmission; streaming of data; rental of telecommunication equipment; providing telecommunication channels for teleshopping services; providing telecommunications connections to a global computer network; telecommunications routing and junction services; teleconferencing services; telephone services; transmission of electronic mail; transmission of digital files; providing user access to global computer networks; video-on-demand transmission; videoconferencing services; voice mail services; wireless broadcasting; facsimile transmission; rental of facsimile apparatus; rental of message sending apparatus; rental of modems; paging services [radio, telephone or other means of electronic communication]; rental of telephones; television broadcasting.

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 terms ‘including’ and ‘in particular’, used in the opponent’s list of services, indicates that the specific services 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 providing access to databases; communications by telegrams; communications by telephone; communications by cellular phones; communications by computer terminals; communications by fiber optic networks; electronic bulletin board services [telecommunications services]; providing internet chatrooms; message sending; news agency services; providing online forums; satellite transmission; streaming of data; providing telecommunication channels for teleshopping services; providing telecommunications connections to a global computer network; telecommunications routing and junction services; teleconferencing services; telephone services; transmission of electronic mail; transmission of digital files; providing user access to global computer networks; video-on-demand transmission; videoconferencing services; voice mail services; wireless broadcasting; facsimile transmission; paging services [radio, telephone or other means of electronic communication]; rental of access time to global computer networks; rental of telecommunication equipment; rental of facsimile apparatus; rental of message sending apparatus; rental of modems; rental of telephones; television broadcasting fall within the broad category of telecommunications services (i.e. services that allow people to communicate with one another by remote means). These services have relevant points in common with the opponent’s web-based software for marketing and media, including procedures for determining the data necessary therefor and software for marketing and media stored on data carriers, including the procedures for determining the data necessary therefor.

Since the 1990s, the boundary between telecommunications equipment and IT hardware/software has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecommunications data. The contested telecommunications services may be provided using software stored on data carriers. Equipment used for telecommunications purposes, such as modems, mobile phones, landline telephones, answering machines, fax machines, pagers, routers, etc., is also considered to cover the telecommunications control software that must be in place to successfully support telecommunications operations. Any software that provides the ability to perform telecommunications operations can be considered telecommunications control software. Therefore, the opponent’s web-based software for marketing and media, including procedures for determining the data necessary therefor; software for marketing and media stored on data carriers, including the procedures for determining the data necessary therefor in Class 9 and the contested services in Class 38 have the same purpose. Although their nature is different, their purpose, end users and distribution channels are the same (12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26). Furthermore, they are complementary. Therefore, the contested services mentioned above are similar to the opponent’s goods in Class  9.

The contested information about telecommunication refers to the provision of advice about various telecommunications services. Such services can be provided by telecommunications operators; for example, when a customer has a problem with their internet connection, they call the same company (or outlet store) from which they purchased the internet subscription. Since the opponent’s web-based software for marketing and media and software for marketing and media stored on data carriers are goods for which telecommunication is needed, the Opposition Division finds the contested services similar to a low degree to the opponent’s aforementioned goods in Class 9, since they have the same general purpose of enabling telecommunication, and, furthermore, they target the same relevant public and have the same 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 similar, to varying degrees, are directed both at the public at large and at business customers with specific professional knowledge.

The degree of attention of the average consumer of the goods in question may vary from average to high, depending on the technical level of the goods, the frequency of purchase and their price (05/05/2015, T-423/12, Skype, EU:T:2015:260, § 22; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27; 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37).

c) The signs

M-Cloud
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both marks contain the element ‘Cloud’ which is defined by the Oxford English Dictionary in many senses, also as ‘a visible mass of condensed watery vapour floating in the air at some considerable height above the general surface of the ground’ and specifically in the field of computing as ‘networked computing facilities providing remote data storage and processing services (typically via the Internet), considered collectively’. This element, with the meaning of on-demand availability of computer system resources, especially data storage and computing power, would be understood thought-out the relevant territory and it is non-distinctive for all goods and services as it can indicate that they are accessible on cloud.

Both marks also contain the letter ‘m’ which is clearly separated by the element ‘Cloud’ by a hyphen in the earlier mark and by its stylisation in the contested mark. For some part of the public this letter, in relation to the services at hand could be perceived as an abbreviation of ‘mobile’. For this part of the public, this meaning is of limited distinctiveness of the services as they can be related to mobile phones, handheld computers, and similar technology. For other part of the public, namely for the Greek-speaking part of the public, the letter ´M´ will not be perceived as an abbreviation of ‘mobile’, (‘κινητό’ in Greek) and therefore is distinctive. Consequently, for the purposes of this comparison and bearing in mind that similarities between signs have a greater impact if they lie in distinctive elements, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the public.

The earlier mark is a word mark consisting of the verbal element ‘M-Cloud’. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case or in a combination of the two, unless the capitalisation is irregular and departs from the normal way of writing.

The earlier mark is entirely reproduced in the contested mark and their only difference between the signs lies in the hyphen and capitalisation of the earlier trade mark, and the stylisation of the contested mark: the letter ‘m’, in white small font, is placed in a black cloud-shaped label and the word ‘Cloud’ is written in larger standard typeface in gradient shades of grey. The cloud-shaped label highlights the message conveyed by the verbal element ‘Cloud’ and is of limited distinctiveness. Although the letter ‘m’ is quite smaller in comparison to the element ‘Cloud’, it is visible and cannot be considered as negligible.

The earlier mark, being a word mark, has no element that could be considered clearly more dominant than other elements. The element ‘Cloud’ in the contested sign is the dominant one as it is the most eye-catching.

Moreover, when signs consist of both verbal and figurative components (which is the case of the contested mark), 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).

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 verbal elements ‘M Cloud’. The signs differ in the additional figurative element of the contested sign, as well as in the colour of that sign. Moreover, the elements ‘M’ and ‘Cloud’ in the earlier sign are separated by a hyphen which has no counterpart in the contested sign. Taking into account what has been noted above regarding the distinctiveness and the impact of the elements of the signs, they are considered visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /M-cloud/, present identically in both signs. The figurative elements of the contested sign and the ‘-’ between the elements ‘M’ and ‘Cloud’ in the earlier mark are not subject to a phonetic assessment. Therefore, the signs are aurally identical.

Conceptually, although the coinciding word ‘Cloud’ will evoke a concept, it does not serve to establish any conceptual similarity because this element is not capable of indicating the commercial origin in any of the marks. The attention of the relevant public will be attracted by the additional fanciful verbal elements which have no meanings. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision].

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the services are similar to varying degrees. The relevant public consists of both the public at large and business customers with specific professional knowledge. For both parts of the public, the degree of attention will vary from average to high, depending on the relevant goods and services. The earlier mark is inherently distinctive to an average degree, which affords it a normal scope of protection under Article 8(1)(b) EUTMR. The signs are visually highly similar, aurally identical. The earlier mark is totally included in the contested sign while the differences between the signs are confined to the stylisation of the contested mark and its figurative element of a cloud. Even if the element ‘Cloud’, which is of limited distinctiveness which is the dominant part of the contested mark, its remaining verbal element ‘m’ is distinctive and cannot be overlooked by the relevant public.

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 services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

In view of all the relevant factors in the present case, the Opposition Division finds that there is a likelihood of confusion on the part of the public, even for the services that are similar to a low degree and for the services in relation to which a higher than average degree of attention can be expected, due to the striking similarities between the signs.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 476 996, designating the European Union. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier international trade mark registration No 1 476 996, ‘M-Cloud’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 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

Helen Louise MOSBACK

Aliki SPANDAGOU

Martin EBERL

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.