OPPOSITION Nо B 3 115 097

 

Jeeves Information Systems AB, Box 1042, 101 38 Stockholm, Sweden (opponent), represented by Valea AB, Lilla Bommen 3a, 405 23 Göteborg, Sweden (professional representative) 

 

a g a i n s t

 

Robotise GmbH, Claudius-keller-straße 3c, 81669 München, Germany (applicant), represented by  Mirko Kai Schade, Linprunstrasse 10, 80335 München, Germany (professional representative).

On 10/03/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 115 097 is partially upheld, namely for the following contested goods and services:

 

	Class 9: Security surveillance robots, service robots (machines) with artificial intelligence; artificial intelligence computers. Class 42: Computer rental; rental of service robots with artificial intelligence.
2.	European Union trade mark application No 18 099 209 is rejected for all the above goods and services. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 099 209 ‘Jeeves’ (word mark). The opposition is based on, inter alia,  European Union trade mark registration No 16 743 544 ‘JEEVES’ (word mark). The opponent invoked  Article 8(1)(a) EUTMR and 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 16 743 544.

 

a) The goods and services

 

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

Class 9: Computer software (recorded).

Class 42: Consultation in connection with computer software installation.

The contested goods and services are the following:

Class 7: Carrier robots (machines); service robots (machines) for the transport of goods, beverages, food, medicines, sanitary articles, letters, parcels, suitcases, luggage; transportation robots (machines) with autonomous navigation; service robots (machines) for the autonomous transport of objects in hotels, residential and commercial buildings, offices, hospitals, care facilities; transportation robots (machines) with a refrigeration function for goods, beverages, foods, medicines, sanitary articles; service robots (machines) for making beverages; automatic beverage preparation and beverage dispensing machines.

Class 9: Security surveillance robots, service robots (machines) with artificial intelligence; artificial intelligence computers.

Class 11: Mobile devices with autonomous navigation, namely refrigerating cabinets, ovens, microwaves, coffee machines, all for use in the fields of services and care provided in hotels, airports, residential and commercial buildings, offices, trade fairs and conference centres, hospitals and care facilities.

Class 42: Computer rental; rental of service robots with artificial intelligence.

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 term ‘namely’, used in the applicant’s list of goods and 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 goods specifically listed.

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 7 and 11

The contested goods in Class 7 comprise a wide range of robots which are merely used as moving, handling, manufacturing and dispensing equipment. In this regard, it must be stressed that in today’s high-tech society, almost all electronic apparatus function using integrated software. However, this does not lead to the automatic conclusion that software is similar to goods that use software to function successfully.

Specifically, although it cannot be neglected that the contested goods in Class 7 may probably functions using an integrated software, this does not lead to the conclusion that they can be considered similar to the opponent’s computer software (recorded).

One could argue that the software is important for the use of the contested goods; however, they are not complementary because they are not aimed at the same public. The contested goods are mainly directed to professionals seeking robots machines to be used for performing specific tasks, whereas the software is aimed at the actual manufacturer of these robots. The producers are not the same, nor are the distribution channels, and they do not have the same purpose. Therefore, they are dissimilar.

The same reasoning can be applied mutatis mutandis to the contested mobile devices with autonomous navigation, namely refrigerating cabinets, ovens, microwaves, coffee machines, all for use in the fields of services and care provided in hotels, airports, residential and commercial buildings, offices, trade fairs and conference centres, hospitals and care facilities in Class 11. Although these goods might in principle use an integrated software, they have different public, producers, distribution channels and purpose. Furthermore, they are not complementary. Therefore, they are dissimilar to the opponent’s computer software (recorded).

Dissimilarity is also found between the above contested goods and the opponent’s services in Class 42. In particular, they have clearly different nature, purposes, methods of use, distribution channels, relevant publics and producers/provider. In addition, they are not complementary or in competition.

Contested goods in Class 9

The contested security surveillance robots, service robots (machines) with artificial intelligence are highly specialised robots devices belonging to the IT field, that performs security or other service functions.

The Opposition Division do not agree with the applicant’s arguments where it considers these goods dissimilar to computer software. Although the applicant makes reference to some previous cases, it must be recalled that the Office is not bound by its previous decisions, since each case has to be dealt with separately and with regard to its particularities.

Indeed, the subject highly technical good use central processing units and specific computer software in order to function and operate and may also be used with different software options or updates to program further functions or more advanced tasks into them. Specifically, the subject robot operates semi- or fully autonomously using artificial intelligence to perform services useful to the well-being of humans and equipment. As a result, these goods can target the same relevant public and since computer software is essential for the performance, function and operational capability of the contested goods, they are also complementary. Moreover, in view of the highly technical nature of the contested goods, computer software for such goods is likely to be distributed through the same trade channels and be produced by the same undertakings. Consequently, they are considered similar with the opponent’s computer software (recorded).

Moreover, the contested artificial intelligence computers are similar with the opponent’s computer software (recorded) as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

Contested services in Class 42

The contested computer rental are similar with the opponent’s consultation in connection with computer software installation as they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The contested rental of service robots with artificial intelligence are also similar with the opponent’s computer software (recorded) in Class 9 as they usually coincide in producer, relevant public and distribution channels. Specifically, the undertaking that provides the rental of such robots might also be the same who develop and commercialise the robots and their related software.

 

 

b) The signs

 

JEEVES	Jeeves
Earlier trade mark	Contested sign

 

The signs under comparison are word marks. The protection of a word mark concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in lower-case letters and the other in upper-case letters. 

Consequently, the signs are identical.

 

c) Global assessment, other arguments and conclusion

 

Some contested goods and 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 insofar as it is directed against these goods and services. The rest of the contested goods are dissimilar. As the similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

 

The opponent has also based its opposition on the European Union figurative trade mark registration No 17 980 769,  .

  

This earlier mark invoked by the opponent is less similar to the contested sign due to its stylisation and figurative elements. Moreover, it covers the same  scope of the goods and services of the earlier mark compared above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

  

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as it is based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the goods are obviously not identical.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Edith Elisabeth VAN DEN EEDE

Aldo BLASI

Erkki MÜNTER

 

 

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.