OPPOSITION Nо B 3 108 333

 

Lesson Nine GmbH, Max-Beer-Str. 2, 10119 Berlin, Germany (opponent), represented by Raphael Thomas, Oranienburger Str. 23, 10178 Berlin, Germany (professional representative) 

 

a g a i n s t

 

OKsystem A.S., Na Pankráci 1690/125, 14021 Praha, Czech Republic (applicant), represented by Patentcentrum Sedlák & Partners S.R.O., Okružní 2824, 370 01 České Budějovice, Czech Republic (professional representative).

On 11/03/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 108 333 is partially upheld, namely for the following contested goods and services: Class 9: Computer software, apparatus for recording, transmission or reproduction of sound and/or images, recorded and non-recorded audio, visual and audiovisual recording media, electronic data and electronic databases and other information recorded on computer media; electronic publications, downloadable, electronic presentations, firmware, middleware, software products and application development tools; electronic, data or information networks; information products on storage media or on electronic, data, information and communications networks. Class 38: Dissemination, exchange or acquisition of messages and information, information services relating to broadcasting, dissemination of information via data networks, distribution of electronic magazines, information, audio or audiovisual works via an information or data or electronic or communications or telecommunications or computer network. Class 41: Education, providing of training, entertainment and cultural activities, organisation of training, lecture series, seminars; organisation of professional courses, advice, consultancy and information relating to the aforesaid services. Class 42: Software creation and creation of computer systems, consultancy provided in connection with implementation of software, computer programming and the updating of computer programs, installation of computer software, creation of information databases, rental of software.
2.		European Union trade mark application No 18 107 916 is rejected for all the above goods and services. It may proceed for the remaining services.

 

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 18 107 916 (figurative mark), namely against all the goods and services in Classes 9, 35, 36, 38, 41 and 42. The opposition is based on European Union trade mark registration No 13 641 485, ‘Babbel’ (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:

Class 9: Electronic data carriers; software; audiovisual teaching apparatus.

Class 16: Teaching materials [except apparatus]; posters; flyers; printed matter; printed matter for instructional purposes.

Class 41: Teaching; language tuition.

The contested goods and services are the following:

 

Class 9: Computer software, apparatus for recording, transmission or reproduction of sound and/or images, recorded and non-recorded audio, visual and audiovisual recording media, electronic data and electronic databases and other information recorded on computer media; electronic publications, downloadable, electronic presentations, firmware, middleware, software products and application development tools; electronic, data or information networks; information products on storage media or on electronic, data, information and communications networks.

Class 35: Information, information products and multimedia information for business purposes, remote organisation and management of business information via electronic communication networks, computerized file management, data processing, data bank services, business, economic and organisational consultancy.

Class 36: Insurance, financial affairs; monetary affairs; real estate affairs.

Class 38: Dissemination, exchange or acquisition of messages and information, information services relating to broadcasting, dissemination of information via data networks, distribution of electronic magazines, information, audio or audiovisual works via an information or data or electronic or communications or telecommunications or computer network.

Class 41: Education, providing of training, entertainment and cultural activities, organisation of training, lecture series, seminars, organisation of professional courses, advice, consultancy and information relating to the aforesaid services.

Class 42: Software creation and creation of computer systems, consultancy provided in connection with implementation of software, computer programming and the updating of computer programs, installation of computer software, creation of information databases, rental of software. 

 

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.

The applicant argues that ‘the products and services of the contested sign use a combination of the best cryptographic algorithms and protocols to protect information from active and passive attacks’ and as such are aimed and specialized professional public whereas in the case of the opponent’s ‘products and services, it is educational (language) software which is offered as an ancillary service in addition to other travel and language agency services. The consumer public of the opponent is completely different…’ [sic] However, it should be noted that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and services. Any actual or intended use not stipulated in the list of goods and services is not relevant for this comparison, since it is part of the assessment of likelihood of confusion in relation to the goods and services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71, T-308/13, Electrolinera, EU:T:2014:965, § 50).

Contested goods in Class 9

 

The contested apparatus for recording, transmission or reproduction of sound and/or images include, as a broader category, or overlap with, the opponent's audiovisual teaching apparatus. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent´s goods.

The contested non-recorded audio, visual and audiovisual recording media overlap with the opponent's electronic data carriers. Therefore, they are identical.

The contested recorded audio, visual and audiovisual recording media are highly similar to the opponent’s audiovisual teaching apparatus as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested computer software, firmware, middleware, software products and application development tools are included in the broad category of, or overlap with, the opponent’s software. Therefore, they are identical.

The contested electronic data and electronic databases and other information recorded on computer media; electronic publications, downloadable; electronic presentations; electronic, data or information networks; information products on storage media or on electronic, data, information and communications networks are at least similar to opponent’s software as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Classes 35 and 36

The contested information, information products and multimedia information for business purposes, remote organisation and management of business information via electronic communication networks, business, economic and organisational consultancy in Class 35 are broadly speaking business information management, business administration and consultancy services, including business analysis and information services. Those services are provided are aimed at supporting or helping other businesses to do business, to improve their businesses or to reinforce their position in the market and acquire competitive advantage.

The contested computerized file management, data processing, data bank services in Class 35 are basically administrative support services.

The contested insurance, financial affairs; monetary affairs; real estate affairs in Class 36 are services related to banking and other financial transactions as well as insurance and real estate activities.

All the above listed services do not have any relevant factors in common with the opponent’s goods in Class 9 and 16. In general, apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. The fact that for example the opponent’s electronic data carriers, software or printed matter may be used when performing the contested services is insufficient for finding similarity. These goods and services are neither provided by the same undertakings nor distributed through the same channels. Albeit the relevant sections of the public may overlap to a certain extent that is not sufficient to conclude on their similarity given their different purposes and natures. Consequently, they are considered dissimilar.

Furthermore, as regards the aforementioned contested services and the opponent’s services in Class 41, it is noted that the know-how of the undertakings providing them is different and they have a different nature and purpose. The commercial origins and distribution channels of these services are also different as companies specialised in business information management, business consultancy, analysis and/or administration, in providing insurance, financial and real estate services do not usually offer also teaching, tuition services. Those services are not complementary or in competition. Therefore, the contested services in Classes 35, 36 and the opponent’s services in Class 41 are also dissimilar.

Contested services in Class 38

The contested dissemination, exchange or acquisition of messages and information, information services relating to broadcasting, dissemination of information via data networks, distribution of electronic magazines, information, audio or audiovisual works via an information or data or electronic or communications or telecommunications or computer network are telecommunication services or services closely related to those. All those services allow the dissemination of information, respectively allow people to communicate with one another by remote means.

Owing to rapid developments in the field of information technology, in particular the growing importance of the internet, the markets for IT hardware and software on the one hand, and telecommunications services as on the other, have clearly become interlinked. Nowadays, for example computers are generally networked and their autonomous use is actually the exception to the rule; the rule being that computers and software, insofar as they enable access to those services or provide the ability to perform them, renders them complementary (see by analogy the judgment of 15/10/2018, T-444/17, life coins / LIFE et al., EU:T:2018:681, § 37). Therefore, these services are similar to the opponent’s software in Class 9 given their complementary character. In spite of the fact that the nature of the opponent’s goods in Class 9 and the contested services in Class 38 is not the same, their purpose, end users and distribution channels are the same.

Contested services in Class 41

The contested education, providing of training, entertainment and cultural activities, organisation of training, lecture series, seminars, organisation of professional courses, advice, consultancy and information relating to the aforesaid services are (if not identical) at least similar to the opponent’s teaching. The majority of these contested services are educations services or services related thereto and either overlap with the opponent´s services, or at least coincide in nature, purpose, relevant public and distribution channels and have the same commercial origin.

As regards the remaining contested services (related to entertainment and cultural activities), it is noted that those as the opponent’s services of teaching, tuition are likely in some cases to require similar considerations on the part of the provider with regard to various factors: e.g. participant registration, venue, transportation, speaker fees, marketing etc. As a consequence, these services may be provided by the same companies. There are differences between the overarching concepts (entertainment and cultural activities, on the one hand, and education, teaching, on the other hand). However, these concepts may also be combined; educational and training events may be entertaining; participating in cultural activities may serve an educational or training purpose.

Contested services in Class 42

The contested software creation and creation of computer systems, consultancy provided in connection with implementation of software, computer programming and the updating of computer programs, installation of computer software, creation of information databases are considered similar to the opponent’s software in Class 9. Producer/providers of software will also commonly provide software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary.

The contested rental of software is also similar to the to the opponent’s software in Class 9 since they usually coincide in producer, 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 or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

  

 

c) The signs

 

Babbel
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier word mark consists of the verbal element ‘Babbel’. This word will be understood, contrary to the applicant’s claims, at least by the English-speaking part of the relevant public as a misspelling of the word ‘Babel’, referring to a confused situation (https://www.lexico.com/definition/babel); to the confusing sound of many people talking at the same time or using different languages (https://dictionary.cambridge.org/dictionary/english/babel). Having in mind the nature of the goods and services, this element has no direct meaning related to them or to characteristics thereof and is distinctive.

The contested figurative sign is composed by a figurative element and a verbal element. The verbal element of the contested sign reads as ‘BabelApp’. When perceiving that verbal element, the consumer will break it down into two components, namely ‘Babel’ and ‘App’.

The word ‘Babel’ will be understood with the same meaning as explained above, at least by the English-speaking public. The same reasoning applies also to its distinctive character, as this word does not convey any direct relevant meaning in relation to the goods and services concerned. The word ‘App’ will be understood by both the English-speaking and the non-English speaking public (due to its widespread use) as referring to an ‘application, especially as downloaded by a user to a mobile device’ (https://www.lexico.com/definition/app). Bearing in mind the nature of the goods and services in question, that element is non-distinctive. As regards the goods in Class 9, those are either software products and applications or devices on which the apps could be used. As regards the services in Classes 38, 41 and 42, this word will indicate there that the relevant services can be accessible through an ‘App’.

Since having a meaningful element in common could make the signs more similar conceptually in addition to the fact that the the likelihood of confusion is greater in case the differing element/s are weak respectively non-distinctive, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The figurative element of the contested sign depicts an e-mail icon in form of a speech bubble presented in a quite basic stylisation. Considering the relevant goods and services of contested sign and along a similar line of reasoning as with respect to the element ´App´ above, this depiction is of a very limited distinctive character as it will be perceived as a reference to their characteristics.

In any event, 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). Consequently, the element ‘Babel’ is the most distinctive element of the contested sign.

Visually, the signs coincide in the letters ‘BAB*EL’. However, they differ in an extra letter ‘B’ present uniquely within the earlier mark. They further differ in the verbal element ‘App’ and the figurative element appearing only within the contested sign. Taking into account the above considerations as regards the distinctiveness of the elements, the signs are similar at least to an average degree.

 

Aurally, the additional letter ´B´ present in the less perceivable middle part of the earlier mark will not lead to a significant difference in the pronunciation of the earlier mark and the element ´BABEL´ of the contested sign. The pronunciation of the signs differs in the sound of the element ‘APP’ of the contested mark, which have no counterparts in the earlier sign but – as previously stipulated – is deprived of distinctiveness. The figurative elements of the contested sign are not subject to a phonetic assessment. Therefore, the signs are similar to a higher than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the concept of ‘Babel’ (although in the case of the earlier mark as its misspelled version) and taking into account the above considerations as regards the distinctiveness of the coinciding and differing elements, the signs are conceptually highly similar.

  

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.

e) Global assessment, other arguments and conclusion

 

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the relevant public might make between the two marks and on the degree of similarity between the signs and the goods and services (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sàbel, EU:C:1997:528, § 22).

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 goods and services at issue are partly identical, partly similar and partly dissimilar. The relevant public is the public at large as well as the professional public, and the degree of attention is deemed to vary from average to high.

The conflicting signs have been found to be similar in all three aspects of the comparison on account of the coincidences between the earlier mark and the most distinctive element of the contested sign (which differ only in the additional letter ‘B’, placed in the less perceivable middle part of the earlier mark). The remaining differences between the signs reside in elements of very limited or no distinctiveness which barely (if at all) will be perceived as indicators of commercial origin of the goods and services.

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). 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 641 485. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

  

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

  

The rest of the contested services are dissimilar. As 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 services cannot be successful.

  

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

 

 

Renata COTTRELL

Birgit CESSY FILTENBORG

Denitza STOYANOVA-VALCHANOVA

 

 

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.