OPPOSITION Nо B 3 117 356

 

LSD GmbH & Co. KG, In der Steele 13, 40599 Düsseldorf, Germany (opponent), represented by WR Legal Weßling Rinnert Neven Arndt Partnerschaft von Rechtsanwälten mbB, Niederkasseler Lohweg 18, 40547 Düsseldorf, Germany (professional representative) 

 

a g a i n s t

 

N-Cubator B.V., Markt 19, 6071 JD Swalmen, Netherlands (applicant).

On 27/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 117 356 is upheld for all the contested goods and services, namely

 

	Class 9: software for playback, streaming, transmitting, receiving audio-visual media content via the Internet; Computer software, namely, downloadable computer software for word processing, computer software for document management, for database integration, for use in database management; computer software for use in customer relationship management (CRM); Computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Computer software, namely, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use. Class 35: Provision of information and advisory services relating to e-commerce; provision of information relating to market studies; provision of market research information; advertising and business management consultancy; advertising agency services; advertising the goods and services of others; business management and organization consultancy; computerized file management; market analysis and research services; market research studies; computer database management services. Class 38: Telecommunication services, namely, internet access provider services; communication services, namely, electronic transmission of voices, transmission of voice, visual images, digital audio and digital video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; transmission of voice, visual images, digital audio and digital video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; provision of access to the Internet; provision of access to a global computer network.
2.		European Union trade mark application No 18 163 618 is rejected for all the contested goods and services. It may proceed for the remaining uncontested goods and services.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 29/04/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 163 618 (word mark SNOOP), namely against some of the goods and services in Classes 9, 35 and 38. The opposition is based on, inter alia,  EUTM registration No 17 880 370 (word mark snoopstar). 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 EUTM registration  No 17 880 370.

 

a) The goods and services

 

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

 

Class 9: Recorded content; Computer programmes for data processing; Computer programs and software for image processing used for mobile phones; Software for processing images, graphics and text; Augmented reality software for use in mobile devices; Information technology and audio-visual, multimedia and photographic devices; Computer software to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Multi-media recordings; Application software for mobile devices.

Class 35: Advertising, marketing and promotional services; Business assistance, management and administrative services; Business analysis, research and information services; Provision of information and advisory services relating to e-commerce; Promoting the goods and services of others via computer and communication networks.

Class 38: Computer communication and Internet access; Transmission of multimedia content via the Internet; Providing access to multimedia content online; Telecommunication services; Consultancy in the field of telecommunications.

Class 42: IT services; Design services; Consultancy services relating to software used in the field of e-commerce.

The contested goods and services are the following:

 

Class 9: software for playback, streaming, transmitting, receiving audio-visual media content via the Internet; Computer software, namely, downloadable computer software for word processing, computer software for document management, for database integration, for use in database management; computer software for use in customer relationship management (CRM); Computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Computer software, namely, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use.

Class 35: Provision of information and advisory services relating to e-commerce; provision of information relating to market studies; provision of market research information; advertising and business management consultancy; advertising agency services; advertising the goods and services of others; business management and organization consultancy; computerized file management; market analysis and research services; market research studies; computer database management services.

Class 38: Telecommunication services, namely, internet access provider services; communication services, namely, electronic transmission of voices, transmission of voice, visual images, digital audio and digital video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; transmission of voice, visual images, digital audio and digital video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; provision of access to the Internet; provision of access to a global computer network.

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 both lists 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 and services specifically listed.

 

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 goods in Class 9

 

The contested goods software for playback, streaming, transmitting, receiving audio-visual media content via the Internet; Computer software, namely, downloadable computer software for word processing, computer software for document management, for database integration, for use in database management; computer software for use in customer relationship management (CRM); Computer software for processing digital images, for processing digital music files, for organizing and viewing digital images and photographs, for creating and editing music and sounds, for creating digital animation and special effects of images, for manipulating digital audio information for use in audio media applications, to enhance the audio-visual capabilities of multimedia applications, namely, for the integration of text, audio, graphics, still images and moving pictures; Computer software, namely, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use are all at least highly similar to the opponent’s goods software for processing images, graphics and text as they originate from the same companies, are directed at the same consumers, share their distribution channels and nature and have the same method of use.

Contested services in Class 35

Provision of information and advisory services relating to e-commerce is identically contained in both lists of services.

The contested provision of information relating to market studies; provision of market research information; market analysis and research services; market research studies are included in or overlap with the broad category of the opponent’s services business analysis, research and information services and are therefore identical.

The contested advertising consultancy; advertising agency services; advertising the goods and services of others are included in the broad category of the opponent’s advertising, marketing and promotional services and are therefore identical.

The contested business management and organization consultancy; business management consultancy are included in the broad category of the opponent’s services business assistance, management and administrative services and are therefore identical.

The contested services computerized file management; computer database management services are similar to the opponent’s services Business administrative services as they have the same purpose. They usually coincide in producer and relevant public.

Contested services in Class 38

The contested services Telecommunication services, namely, internet access provider services; communication services, namely, electronic transmission of voices, transmission of voice, visual images, digital audio and digital video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; transmission of voice, visual images, digital audio and digital video by telecommunications networks, wireless communication networks, the Internet, information services networks and data networks; provision of access to the Internet; provision of access to a global computer network are included in the opponent’s broad category of Telecommunication services and are therefore identical.

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 and at business customers with specific professional knowledge or expertise.

 

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

 

c) The signs

 

snoopstar	SNOOP
Earlier trade mark	Contested sign

 

The relevant territory is the EU.

 

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).

Both signs are word marks and, therefore, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the signs are represented in upper- or lower-case characters-

 

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 common element ‘snoop’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as Malta and Ireland.

 

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements, which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57).

 

The element ‘snoop’ which represents the contested mark and is the first element in the earlier mark refers in English to ‘to go around in a sly or prying manner’ (see Oxford English Dictionary) and has no clear meaning in relation to the relevant goods and services and is therefore considered to be distinctive.

 

As regards the earlier sign’s additional verbal element, the General Court has held that ‘STAR’ is part of the basic English vocabulary. Accordingly, the English word ‘STAR’ is generally understood as a laudatory term that emphasises the quality of the goods and services (11/05/2010, T‑492/08, Star foods, EU:T:2010:186, § 52). Therefore, the verbal element ‘STAR’ has low degree of distinctiveness, since it may be perceived as an indication of the superior quality of the relevant goods.

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 and aurally the signs coincide in ‘snoop’ which is the contested mark and only differ in the lowly distinctive verbal element ‘star’ at the end of the earlier mark.

 

Therefore, the signs are highly similar.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the action of going around in a sly or prying manner, the signs are conceptually highly similar. They only differ in the concept of the verbal element ‘STAR’ of the earlier sign which, however, has a low degree of distinctiveness and therefore limited impact.

 

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

 

The goods and services are identical or similar to various degrees. The earlier mark’s distinctiveness is normal. The level of attention varies from average to high. The signs are aurally, visually and conceptually highly similar as they coincide in the verbal element ‘snoop’ which represents the contested mark and is the only fully distinctive element in the earlier mark and it is placed there in the first position which attracts more attention by the consumer.

 

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.

 

Considering all the above, taking into account the high similarity between the signs and the identity or similarity of the relevant goods and services, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

 

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 17 880 370. It follows that the contested trade mark must be rejected for all the contested goods and services.

  

As the earlier right ‘snoopstar’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right 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

 

 

Ivo TSENKOV

Lars HELBERT

Tobias KLEE

 

 

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.