OPPOSITION No B 3 110 765

Sioux Solutions Group B.V., Esp 405, 5633AJ Eindhoven, Netherlands (opponent), represented by Arnold & Siedsma, Rembrandt Tower, 28^th Floor, Amstelplein 1, 1096 HA Amsterdam, Netherlands (professional representative)

a g a i n s t

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

On 05/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 110 765 is upheld for all the contested goods and services, namely:

Class 9: All goods in this Class.

Class 35: Retail store services in relation to computer equipment, computer software, and audio equipment.

Class 38: All services in this Class.

2. European Union trade mark application No 18 164 001 is rejected for all the contested goods and services. It may proceed for the remaining non-contested goods and services, namely:

Class 25: All goods in this Class.

Class 35: All services in this Class except for retail store services in relation to computer equipment, computer software, and audio equipment.

Class 41: All services in this Class.

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

REASONS

Initially, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 164 001 for the word mark ‘LIME’. Following the opponent’s limitation, the opposition remains directed against all the goods and services in Classes 9 and 38 and some the services in Class 35. The opposition is based on European Union trade mark registration No 16 706 178 for the word mark ‘LIME’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK — Limitation of the scope of the opposition

In the notice of opposition of 05/02/2020, the opponent ticked the box indicating that the opposition has been submitted against all the goods and services of the contested trade mark, namely all the goods and services in Classes 9, 25, 35, 38 and 41.

The opponent stated in its submissions of 10/08/2020 that the opposition is limited and is no longer aimed against the crossed-out goods and services. The Opposition Division will therefore proceed with examining the opposition only in relation to the goods and services indicated by the opponent as listed below, as a limitation of the basis of the opposition is possible at any moment.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION — Article 8(1)(a) EUTMR and Article 8(1)(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, inter alia, the following:

Class 9: Scientific, photographic, optical, weighing, measuring, signalling and checking (supervision) apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus and instruments for optical and laser technology; magnetic data carriers, recording discs; data processing equipment and computers; computer software; software (apps); computer application software for mobile phones and telecommunications apparatus; none of the aforementioned goods are intended for or relate to customer relationship management systems.

Following the abovementioned limitation of the scope of the opposition, the contested goods and services are the following:

Class 9: Computer hardware; computer hardware and peripheral devices and 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 producing financial models, for use in database management; computer software for authorizing access to databases; computer software for creating searchable databases; computer software for use in customer relationship management (CRM); computer software to automate data warehousing; software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; computer software, namely, communications software for connecting computer network users; computer software for use in providing multiple user access to a global computer information network; e-commerce software to allow users to perform electronic business transactions via a global computer network; computer software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, for controlling and managing access server applications, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; 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 games; computer games downloadable from a global computer network; computer games for use on mobile and cellular phones; computer software, namely, computer software for encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, computer software and firmware for operating system programs, computer aided design (CAD) software for general use, computer aided manufacturing (CAM) software for general use; computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads; interface cards for data processing equipment in the form of printed circuits; computer networking hardware and data communications equipment, namely, electronic communications systems comprised of computer hardware for the transmission of data between two points, computer network adapters, switches, routers, and hubs; computer memory devices, namely, flash memory cards, flash memory expansion modules, memory boards, random access memory cards and secure digital (SD) memory cards; electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals; electronic circuits and printed electronic circuits; electric wires for communication equipment; graphite and fuel cell electrodes; telephones; radio, television and satellite aerials; batteries, namely, electric storage batteries, galvanic batteries, general purpose batteries, solar batteries, and batteries for cell phones, watches and cameras; microprocessors; computer keyboards; motion picture films about video recordings featuring music and artistic performances, education, entertainment, fashion, sports and culture.

Class 35: Retail store services in relation to computer equipment, computer software, and audio equipment.

Class 38: Telecommunication services, namely, internet access provider services and provision of telecommunication access to films and television programs provided via a video-on-demand service, wireless digital messaging services, electronic mail services through wired and wireless access, paging services, wireless digital messaging services, webcasting and podcasting of music, fashion shows and television programs, providing electronic message alerts via the internet, personal communication 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; telecommunication bundle services that allow customers to reach cellular phones, voicemail and call routing between wireline and wireless phones and voicemail boxes; 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; broadcasting and transmission of television programs; simulcasting broadcast television over global communication networks, the Internet and wireless networks; video on demand transmissions; providing access to digital music websites on the internet; provision of access to the Internet; provision of access to a global computer network; video-on-demand transmission services; satellite telephone transmission.

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 and the opponent’s 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.

The goods in Class 9 of the earlier trade mark contain the following limitation ‘none of the aforementioned goods are intended for or relate to customer relationship management systems’ which have been duly taken into account in the below comparison (in relation to each contested item); to avoid repetition, it will not be expressly mentioned, but will be considered included by way of reference.

Contested goods in Class 9

The contested computer software, namely, downloadable computer software for word processing, computer software for document management, for database integration, for producing financial models, for use in database management; computer software for authorizing access to databases; computer software for creating searchable databases; computer software to automate data warehousing; computer software, namely, communications software for connecting computer network users; computer software for use in providing multiple user access to a global computer information network; computer software for controlling self-service terminals, for administration of computer networks, for administration of computer local area networks, for use in computer access control, for controlling and managing access server applications, for controlling and managing access server applications, for monitoring and controlling communication between computers and automated machine systems, to maintain and operate computer system, for providing access to the Internet; 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 encryption, computer software for running development programs and application programs in a common development environment, computer operating software, computer graphics software, computer anti-virus software, computer software for the creation of firewalls, 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 included in the broad category of, or at least overlap with, the opponent’s computer software. Therefore, they are identical.

The contested software for playback, streaming, transmitting, receiving audio-visual media content via the Internet; software that provides real-time, integrated business management intelligence by combining information from various databases and presenting it in an easy-to-understand user interface; e-commerce software to allow users to perform electronic business transactions via a global computer network are included in the broad category of, or at least overlap with, the opponent’s software (apps). Therefore, they are identical.

The contested computer games; computer games downloadable from a global computer network; computer games for use on mobile and cellular phones at least overlap with the opponent’s computer software. Therefore, they are identical.

The contested computer hardware includes, as a broader category, the opponent’s computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s goods.

The contested computer memory devices, namely, flash memory cards, flash memory expansion modules, memory boards, random access memory cards and secure digital (SD) memory cards are included in the broad category of, or at least overlap with, the opponent’s magnetic data carriers. Therefore, they are identical.

Data processing equipment is electrically operated equipment that accumulates, processes and stores data (information extracted on 27/01/2021 from Collins Dictionary at https://www.collinsdictionary.com/es/diccionario/ingles/data-processing-equipment). Generally speaking, it includes any equipment or system of equipment used in the storage, manipulation, management, display, reception or transmission of information. The contested microprocessors are included in a broader category of, or at least overlap with, the opponent’s data processing equipment. Therefore, they are identical.

The contested electronic control apparatus, namely, electronic controllers for computer hardware and peripherals excluding gaming apparatus, electric control panels, and computer terminals at least overlap with the opponent’s apparatus and instruments for controlling electricity. Therefore, they are identical.

The contested electric wires for communication equipment are included in the broader category of, or at least overlap with, the opponent’s apparatus and instruments for conducting electricity. Therefore, they are identical.

The contested batteries, namely, electric storage batteries, galvanic batteries, general purpose batteries, solar batteries, and batteries for cell phones, watches and cameras are included in the broad category of the opponent’s apparatus and instruments for accumulating electricity. Therefore, they are identical.

The contested computer software for use in customer relationship management (CRM) are at least similar to the opponent’s computer software, none of the aforementioned goods are intended for or relate to customer relationship management systems, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they can be complementary.

The contested motion picture films about video recordings featuring music and artistic performances, education, entertainment, fashion, sports and culture are at least similar to computer software, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Telephones are devices that convert voice and other sound signals into a form that can be transmitted to remote locations and that receive waves and convert them back into sound signals. The contested telephones are highly similar to the opponent’s computers as they usually coincide in producer, relevant public, distribution channels and method of use. Furthermore, they are in competition nowadays.

The contested computer hardware for playback, streaming, transmitting, receiving audio-visual media content via the Internet; computer networking hardware and data communications equipment, namely, electronic communications systems comprised of computer hardware for the transmission of data between two points, computer network adapters, switches, routers, and hubs are at least similar to the opponent’s data processing equipment and computers, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested electronic circuits and printed electronic circuits are similar to the opponent’s computers as there is a close relationship between them, they are complementary and it is very likely that companies, which manufacture computers, will also manufacture electronic circuits. Moreover, they can have the same distribution channels and target the same relevant public (see, to this effect, 12/12/2019, R 1923/2019‑5, Televend / Televes et al., § 31).

The contested graphite and fuel cell electrodes are included in the general category of ‘electrodes’, which are conductors through which an electric current enters or leaves an electrolyte, an electric arc, or an electronic valve or tube (information extracted on 27/01/2021 from Collins Dictionary at https://www.collinsdictionary.com/es/diccionario/ingles/electrodes). Graphite electrodes are made of graphite and they carry the electricity that melts scrap iron and steel, and sometimes direct-reduced iron, in electric arc furnaces. This is the vast majority of steel furnaces. Fuel cell electrodes are electrodes made of electrochemical cells that convert the chemical energy of a fuel and an oxidising agent into electricity. These contested goods are at least similar to a low degree to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity as they usually coincide in producer, relevant public and distribution channels.

The contested radio, television and satellite aerials are at least similar to a low degree to the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. The purpose of the contested radio, television and satellite aerials is to receive a TV, satellite or radio signal and to reproduce it on electronic appliances, such as radio, TV, PC. Aerials are normally connected to the said electronic appliances by specially selected cables (including insulation, conducting, tying) and through the electricity terminals, distribution boxes, junction boxes or connection boxes. Since the aerials’ installation requires electrical arrangements with the goods of the earlier mark, such as computers, professional knowledge is required and electricians are normally hired for this task. However, it cannot be excluded that non-specialist consumers who purchase the contested goods will also buy cables, flanges and gutters as part of the electronic and electrical system in order to ensure safety of installation. Either way, the conflicting goods are normally purchased together and are also distributed via the same channels of distribution. Accordingly, the target public may think that the responsibility for those goods lies with the same undertaking (see, to this effect, 19/10/2016, R 2420/2015‑5, TUNEX (fig.) / UNEX (fig.) et al., § 33)

Computer peripheral devices (listed twice) are auxiliary devices used to input information into, and provide output from, a computer. Depending on the relationship between peripheral devices and the computer, various categories of peripheral devices can be identified, such as ‘input devices’ for sending data or instructions to the computer (e.g. a mouse, keyboard, webcam), ‘output devices’ for providing output from the computer (e.g. a computer monitor, printer, projector) or ‘input/output devices’ for performing both input and output functions (e.g. computer data storage device, including a disk drive, USB flash drive, memory card and network adapter). Therefore, the contested computer peripherals, namely, computer mice and mouse pads, computer stands, computer speakers, computer cables, computer card adapters, computer cases, and computer keyboards, joysticks and keypads; interface cards for data processing equipment in the form of printed circuits; peripheral devices for playback, streaming, transmitting, receiving audio-visual media content via the Internet are all computer peripheral devices or computer accessories which are at least similar to a low degree to the opponent’s data processing equipment and computers, as they at least coincide in relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail store services in relation computer software are similar to the opponent’s computer software in Class 9.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from the consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Therefore, the contested retail store services in relation computer equipment, and audio equipment are at least similar to a low degree to the opponent’s data processing equipment and computers.

Contested services in Class 38

The contested telecommunication services, namely, internet access provider services and provision of telecommunication access to films and television programs provided via a video-on-demand service, wireless digital messaging services, electronic mail services through wired and wireless access, paging services, wireless digital messaging services, webcasting and podcasting of music, fashion shows and television programs, providing electronic message alerts via the internet, personal communication services are similar to the opponent’s software (apps); data processing equipment in Class 9. Despite being different in nature since goods are tangible and services are intangible, they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested 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 are similar to the opponent’s data processing equipment in Class 9, as they at least have the same purpose, relevant public and distribution channels.

The contested providing access to digital music websites on the Internet; provision of access to the Internet; provision of access to a global computer network are similar to the opponent’s computer software in Class 9. Despite being different in nature since goods are tangible and services are intangible, they have the same purpose. They usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The remaining contested services in this Class, that is to say telecommunication bundle services that allow customers to reach cellular phones, voicemail and call routing between wireline and wireless phones and voicemail boxes; 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; broadcasting and transmission of television programs; simulcasting broadcast television over global communication networks, the Internet and wireless networks; video on demand transmissions; video-on-demand transmission services; satellite telephone transmission, encompass different kinds of telecommunications services. Telecommunications services are those that allow people to communicate with one another by remote means. Software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation. The contested services are considered similar to the opponent’s software (apps) and data processing equipment. In recent years, the boundary between telecommunications equipment, IT hardware and software has become blurred as a result of the growth of the Internet and its increasing role in telecommunications data transfer. 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 software (apps); data processing equipment and the contested services in this Class have the same purpose. Although their nature is different, their purpose and distribution channels are the same (by analogy, 12/11/2008, T‑242/07, Q2WEB, EU:T:2008:488, § 24-26). Furthermore, they are complementary.

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 to varying degrees 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, specialised nature or terms and conditions of the goods and services purchased.

c) The signs

LIME	LIME
Earlier trade mark	Contested sign

The signs are identical.

d) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods in Class 9, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, the remaining contested goods and services in Classes 9, 35 and 38, as established above in section a) of this decision, were found to be similar to varying degrees 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 goods and services.

The identity of the signs in conflict implies that consumers will not be able to distinguish between them in relation to identical and similar goods and services. This conclusion holds true even if the distinctiveness of the earlier mark as a whole were very low and irrespective of the degree of attention and the sophistication of the relevant public.

Therefore, the opposition is well-founded on the basis of the earlier European Union trade mark registration No 16 706 178 and, consequently, 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

Gueorgui IVANOV

Anna PĘKAŁA

Jakub MROZOWSKI

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.