OPPOSITION Nо B 3 122 526

 

Arbit Cyber Defence Systems Aps, Immerkær 54, 2650 Hvidovre, Denmark (opponent), represented by Otello Lawfirm, Dalgasgade 25, 8., 7400 Herning, Denmark (professional representative)

 

a g a i n s t

 

Arbitt Co., Limited, 2/f Yau Tak Bldg 167 Lockhart, Rd Wanchai, Hong Kong, Hong Kong (applicant), represented by Cabinet De Marcellus & Disser, 17 Rue Cadet, 75009 Paris, France (professional representative).

On 30/04/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 122 526 is partially upheld, namely for the following contested goods and services:

 

Class 9: Computer software; computer e-commerce software to allow users to perform electronic business transactions via a global computer network. Class 35: Retail store services, retail sales services provided by means of a global computer network and computerized searching, ordering and on-line retail and wholesale distributorship services namely for computer software and computer e-commerce software to allow users to perform electronic business transactions via a global computer network.

2.

European Union trade mark application No 18 180 710 is rejected for all the above goods and services. It may proceed for the remaining services.

 

3.	Each party bears its own costs.

 

REASONS

 

On 27/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 180 710 ‘ARBITT’ (word mark), namely against all the goods and services in Classes 9 and 35. The opposition is based on European Union trade mark registration No 17 868 554, ‘Arbit’ (word mark). The opponent invoked Article 8(1)(a) and (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: Computer software for administering, managing, monitoring, securing and optimizing computer networks; computer programs for network management; computer software for location based analytics of website and Internet traffic; computer software in the field of computer network security; computer hardware; computer network switches; LAN (local area network) and wireless LAN access points for connecting network computer users; WAN (wide area network) hardware; Wide area network (WAN) routers; wireless routers; WAN (wide area network) operating software; computer software for database management; gateway routers in the nature of computer control hardware.

Class 42: Monitoring of computer systems by remote access to ensure proper functioning; computer software design; computer services, namely hosting online web facilities for others for setting up and monitoring wireless networks, managing users, installing software updates and setting bandwidth limits.

The contested goods and services are the following:

 

Class 9: Computer software; computer e-commerce software to allow users to perform electronic business transactions via a global computer network.

Class 35: Advertising; advertising by mail order; mail-order advertising; direct mail advertising; advertising on the internet, for others; on-line advertising on a computer network; on-line advertising on computer networks; advertising, including on-line advertising on a computer network; sponsoring in the form of advertising; rental of advertising space on the internet; presentation of companies on the internet and in other media for advertising purposes; computerized file management; commercial management of the licensing of goods and services, for others; arranging of trading and economical contacts, also over the internet; business management services relating to electronic commerce; advertising services for the promotion of e-commerce; provision of information and advisory services relating to e-commerce; provision of an online marketplace for buyers and sellers of goods and services; business administration; office functions; retail store services, retail sales services provided by means of a global computer network and computerized searching, ordering and on-line retail and wholesale distributorship services namely for computer software and computer e-commerce software to allow users to perform electronic business transactions via a global computer network; optimization of online websites for third parties.

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 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 and services specifically listed.

 

It is further 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 computer software includes, as a broader category the opponent's various types of more specific computer software, such as computer software for database management. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested computer e-commerce software to allow users to perform electronic business transactions via a global computer network are similar to the opponent's computer software for administering, managing, monitoring, securing and optimizing computer networks because both are software; therefore, they are similar in nature, are provided by the same undertakings and are offered in the same sales outlets.

Contested services in class 35

The contested advertising; advertising by mail order; mail-order advertising; direct mail advertising; advertising on the internet, for others; on-line advertising on a computer network; on-line advertising on computer networks; advertising, including on-line advertising on a computer network; sponsoring in the form of advertising; rental of advertising space on the internet; presentation of companies on the internet and in other media for advertising purposes; advertising services for the promotion of e-commerce are advertising services which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services, this is the case as regards all the goods and services of the earlier mark. The fact that some of the opponent’s goods or services may appear in advertisements is insufficient for finding similarity. Therefore, and even if some of the opponent’s goods can actually also be used as a medium for disseminating advertising, such as the opponent’s software in Class 9, all the aforementioned contested advertising services are dissimilar to the opponent’s goods and services.

The contested office functions are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information in computer databases, invoicing, and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. In the same sense, the contested computerized file management is a type of office function.

Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. The contested business management services relating to electronic commerce; commercial management of the licensing of goods and services, for others; arranging of trading and economical contacts, also over the internet; provision of information and advisory services relating to e-commerce; provision of an online marketplace for buyers and sellers of goods and services and optimization of online websites for third parties fall within this wide range of management services.

The contested business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

All these contested services in Class 35 are dissimilar to all the goods and services of the earlier mark in Classes 9 and 42 the latter being various kinds of software, networks and hardware on the one hand and specialised technical computer services on the other. These contested services and the aforementioned services under the earlier mark do not have the same nature or purpose, the distribution channels and the sales outlets are different, the producers/providers and the method of use do not coincide. They are neither in competition with each other nor are they complementary to each other. The fact that some of the software covered under the earlier mark may be used to carry out the contested services cannot change this finding.

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, retail sales services provided by means of a global computer network and computerized searching, ordering and on-line retail and wholesale distributorship services namely for computer software are similar to the opponent’s computer software for database management, amongst others.

Furthermore, 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 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.

The retail and wholesale services of the computer e-commerce software to allow users to perform electronic business transactions via a global computer network and the computer software for administering, managing, monitoring, securing and optimizing computer networks covered by the other mark are closely connected from the consumers’ perspective, e.g. they are similar in nature, are provided by the same undertakings and are offered in the same sales outlets.

Therefore, the contested retail store services, retail sales services provided by means of a global computer network and computerized searching, ordering and on-line retail and wholesale distributorship services namely for computer e-commerce software to allow users to perform electronic business transactions via a global computer network are similar to a low degree to the opponent’s computer software for administering, managing, monitoring, securing and optimizing computer networks.

 

 

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 attention will vary from average to higher than average depending on the specialised nature of the goods and services as well as on their price.

 

c) The signs

 

Arbit	ARBITT
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).

Neither the earlier mark nor the contested sign has a meaning for the relevant public and they are, therefore, distinctive.

Both signs are word marks and made up by one single word. Thus, neither sign has any element that may be dominant (visually more eye-catching).

Visually, the signs coincide in ‘ARBIT’ and they only differ in the additional letter ‘T’ at the end of the contested sign.

Where both marks are registered as word marks, the typeface actually used is immaterial. Differences in the use of lower- or upper-case letters are, in general, not relevant.

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.

Therefore, the signs are visually highly similar.

Aurally, taking into account that in many languages of the relevant territory, such as English, German, Spanish, French and Portuguese, the additional ‘T’ at the end of the contested sign will not be voiced, the pronunciation of the signs coincides in the sound of all their letters and therefore, the signs are aurally identical, at least in those languages.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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 claimed that the earlier trade mark is highly distinctive but did not file any evidence in order to prove such a claim.

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

 

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).

 

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.

In the present case, the signs are visually highly similar because they only differ in the final letter of the contested mark. In some parts of the relevant territory aural identity is given. The signs convey no concepts that would contribute to differentiating them from each other. The marks only differ in the additional letter of the contested sign placed at the end, where consumers usually pay less attention. The degree of attention of the relevant public may vary from average to higher than average and the earlier mark enjoys a normal degree of distinctiveness.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the general public and therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

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.

 

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the goods and services 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

 

 

Begoña URIARTE VALIENTE

Claudia SCHLIE

Martina GALLE

 

 

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.