OPPOSITION No B 3 100 946

Glia Ecosystems Ltd, 4 Claridge Court, Lower Kings Road, HP4 2AF Berkhamsted, United Kingdom (opponent), represented by Mewburn Ellis LLP, City Tower 40 Basinghall Street, EC2V 5DE London, United Kingdom (professional representative)

a g a i n s t

Glia Technologies Inc. c/o the Corporation Trust Company – 1209 Orange Street, 19801 Wilmington, United States of America (applicant), represented by Plasseraud IP, 66 rue de la Chaussée d’Antin, 75440 Paris Cedex 09, France (professional representative).

On 18/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 946 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 080 214 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 18 080 214 ‘GLIA’ (word mark). The opposition is based on European Union trade mark registration No 17 604 596 ‘GLIA’ (word mark) The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(a) and (b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

Pursuant to 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:

Class 9: Computer software, including software for mobile devices; computer application software; computer software platforms; interface software; data communications software; data processing software; financial software; financial data processing software; financial modelling software; financial analysis software; financial information software; financial trading software, financial investment software, financial advice software; statistical analysis software; business software, including business analysis, research and information software; software for collecting, processing and analysing business and commercial information; news aggregation and processing software; downloadable computer software and programs, including computer application software and programs for mobile devices; downloadable application software.

Class 35: Business analysis, research and information services, including computerised business analysis, research and information services; providing commercial information from online databases; processing commercial information for others; providing online information about businesses from a computer database or the internet; collecting and processing business and commercial information; compiling of information into computer databases; providing commercial information relating to companies.

Class 36: Financial services, including computerised financial services; financial analysis; financial research; financial assessments and evaluations; financial management services; financial consulting; financial investment services; trading services relating to all kinds of financial instruments and products; currency trading services; financial advice; investment advice; investment services; investment management services; asset management services (financial); financial information processing; financial information services; investment information services; providing financial information and data, including financial information and data to investors; financial database services; providing online information about financial services from a computer database or the internet; financial strategy consulting services; financial information retrieval services.

Class 42: Software as a service; interface software, data communications software, data processing software, financial software, financial data processing software, financial modelling software, financial analysis software, financial information software, financial trading software, financial investment software, financial advice software, all of the above being provided as software as a service; statistical analysis software, business software, including business analysis, research and information software, software for collecting, processing and analysing business and commercial information, and news aggregation and processing software, all of the above being provided as software as a service; hosting digital content online; hosting digital applications online; hosting databases; hosting of mobile applications; hosting multimedia content; hosting interactive applications; hosting of financial trading platforms online or on the internet; computer software design for others; consultancy in the field of software design; development of software for secure network operations; computer software technical support services; consultancy and advice on computer software and hardware; creation, maintenance and adaptation of software; customization of computer hardware and software; design, maintenance and updating of computer software; developing computer software for others; development of interactive multimedia software; development of software solutions for internet providers and internet users; scientific analysis and research; mathematical research; design of mathematical models and algorithms; design of financial models and algorithms.

The contested goods and services are the following:

Class 9: Downloadable computer software platform for others to enable communication through one or more of instant messaging, video, internet co-browsing, screen sharing, and artificial intelligence.

Class 42: Computer services, namely, providing an online non-downloadable software platform for others to enable communication through one or more of instant messaging, video, internet co-browsing, screen sharing, and artificial intelligence; computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions between one or more users in a collaborative manner; computer services, namely, providing temporary use of online non-downloadable software to enable one or more users in one or more physical locations to collaborate in real-time with shared access; software as a service (SAAS) services featuring software for use in one or more of online based audio and video chat and shared web browsing for the purpose of providing channels of real-time communications between sales representatives, staff, customers, and potential customers to improve customer relationships; scientific and technological services and research and design, namely, providing temporary use of online non-downloadable software to track user information for planning and management of business finances, sales information and processing, e-commerce information and processing, customer relationship management, inventory management, sales force management, and marketing information management; industrial research services in the field of business, e-commerce, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of business finances and marketing information for e-commerce based on user interaction.

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.

However, the term ‘namely’, used in the applicant’s list of 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 services specifically listed.

Contested goods in Class 9

The contested downloadable computer software platform for others to enable communication through one or more of instant messaging, video, internet co-browsing, screen sharing, and artificial intelligence are included in the opponent’s broader category of computer software platforms. Therefore, they are identical.

Contested services in Class 42

The contested computer services, namely, providing an online non-downloadable software platform for others to enable communication through one or more of instant messaging, video, internet co-browsing, screen sharing, and artificial intelligence; computer services, namely, providing temporary use of online non-downloadable software to enable one or more users in one or more physical locations to collaborate in real-time with shared access; software as a service (SAAS) services featuring software for use in one or more of online based audio and video chat and shared web browsing for the purpose of providing channels of real-time communications between sales representatives, staff, customers, and potential customers to improve customer relationships are included in the opponent’s broad category of software as a service. Therefore, they are identical.

The contested computer services, namely, hosting online web facilities for others for organizing and conducting online meetings, gatherings, and interactive discussions between one or more users in a collaborative manner are included in the broad category of, or overlap with, the opponent’s hosting interactive applications. Therefore, they are identical.

As regards the contested scientific and technological services and research and design, namely, providing temporary use of online non-downloadable software to track user information for planning and management of business finances, sales information and processing, e-commerce information and processing, customer relationship management, inventory management, sales force management, and marketing information management, it should be noted that the wording preceding the restrictive term ‘namely’ does not, in this case, determine the nature of the listed services, which are all strictly IT services. As such they are included in the broad category of the opponent’s software as a service. Therefore, they are identical.

Furthermore, the contested industrial research services in the field of business, e-commerce, business management, customer relationship management (CRM), inventory management, sales force management, planning and management of business finances and marketing information for e-commerce based on user interaction are similar to the opponent’s scientific analysis and research. Although the contested services concentrate on industrial research that seeks to find solutions to instant problems and tends to be more organisationally focused and practical and the opponent’s category of scientific analysis and research seeks to study a larger body of knowledge that tends to be more conceptual and theoretically focused, they are provided by the same type of specialised undertakings involving professional researchers. Given the fact that they have a similar purpose and they target the same audience through the same distribution channels, they are considered similar.

b) The signs

GLIA	GLIA
Earlier trade mark	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods and services, as established above in section a) of this decision, are identical to the opponent’s goods and services. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods and services.

Furthermore, some contested services, as established above in section a) of this decision, were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these services.

Consequently, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 604 596 ‘GLIA’. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Cynthia DEN DEKKER

Cristina CRESPO MOLTÓ

Biruté SATAITE-GONZALEZ

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.