OPPOSITION No B 1 945 222
SaveUp, Inc., 480 2nd Street, Suite 202, San Francisco, California 94107, United States of America (opponent), represented by Jeffrey Parker and Company, the Grange, Hinderclay, Suffolk IP22 1HX, United Kingdom (professional representative)
a g a i n s t
Itraff Technology Spółka z Ograniczoną Odpowiedzialnością, Bolesława Chrobrego 5F, 60-681 Poznań, Poland (applicant).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods and services of
European Union trade mark application No
On 14/09/2012 the Opposition Division rendered a decision which resulted in the rejection of the opposition on the ground that the earlier EUTM on which the opposition was based had been withdrawn. The decision was appealed and the Board of Appeal decided in case R 2104/2012-1 on 05/09/2013. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the Opposition Division’s decision to close the opposition procedure on 10/08/2012, that is before the three-month period for requesting conversion had lapsed, was taken prematurely and was procedurally incorrect. In particular, the earlier EUTM application was withdrawn on 18/07/2012 and an application to convert it into a national Polish application was filed on 11/10/2012, that is in a timely manner and in accordance with Article 112 CTMR, allowing the opponent to withdraw the EUTM application upon which the opposition was based and request a conversion within a three-month period. The conversion application was accepted by the Office and transmitted to the Polish Office for further processing.
Following the Board’s ruling, the Opposition Division suspended the opposition proceedings in accordance with Rule 20(7)(a) EUTMIR until the opponent was in a position to prove that the Polish application, resulting from the conversion, had been granted. On 24/02/2016 the opponent submitted a registration certificate and a translation in English of the relevant Polish trade mark registration No R-272 928 enjoying the filing date 28/11/2011 and a priority date 26/05/2011. The Office forwarded a copy of the registration documents to the applicant and informed the parties that a decision would be taken in due course.
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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer game software focusing on achieving a set of financial goals.
Class 41: Entertainment services, namely, providing online computer games that help to achieve a set of financial goals.
Class 42: Application service provider (ASP) featuring computer game software focusing on achieving a set of financial goals.
The contested goods and services are the following:
Class 9: Computer software, recorded; Computer game programs; Programs (Computer -) [downloadable software]; Computer programmes [programs], recorded; Computer operating programs, recorded.
Class 38: Message sending; Computer aided transmission of messages and images.
Class 42: Providing search engines for the internet; Installation of computer software; Computer programming; Conversion of data or documents from physical to electronic media; Software (Updating of computer -); Computer software consultancy; Installation of computer software; Maintenance of computer software; Duplication of computer programs; Rental of computer software; Computer software design; Rental of web servers; Rental of computer software.
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, recorded; Computer game programs; Programs (Computer -) [downloadable software]; Computer programmes [programs], recorded; Computer operating programs, recorded include, as broader categories, or overlap with, the opponent’s computer game software focusing on achieving a set of financial goals. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
Contested services in Class 38
The contested Message sending; Computer aided transmission of messages and images are similar to the opponent’s services Application service provider (ASP) featuring computer game software focusing on achieving a set of financial goals in Class 42. This is because these services may coincide in producers, relevant public and distribution channels.
Contested services in Class 42
The contested Providing search engines for the internet; Installation of computer software; Computer programming; Conversion of data or documents from physical to electronic media; Software (Updating of computer -); Computer software consultancy; Installation of computer software; Maintenance of computer software; Duplication of computer programs; Rental of computer software; Computer software design; Rental of web servers; Rental of computer software are similar to the opponent’s software application provision services in Class 42. These sets of services have the same general nature and can coincide in providers, relevant public and distribution channels.
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 specialised business customers with specific professional knowledge or expertise. The degree of attention of the relevant public varies from average to high, as some of the goods and services concerned are likely, by their degree of sophistication and their cost, to be the subject of a more careful purchasing decision.
Earlier trade mark
The relevant territory is Poland.
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 earlier mark is a word mark consisting of the verbal element ‘SAVEUP’.
The contested sign is figurative and consists of a red square with rounded corners. Diagonally within the square the following elements appear one above the other: a small circle in grey and white, three dollar signs ($) in white and the verbal elements ‘SAVE’ and ‘UP’, also written in white letters, where ‘UP’ is in bold and bigger letters.
The earlier mark consists of only one component and its inherent distinctiveness is normal in relation to the relevant goods and services. This is because it has no meaning in the relevant language. In addition, the earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.
Likewise, the contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements. As for the distinctiveness of the elements of the contested sign, as mentioned above, it contains three dollar signs ($), which will be understood by the relevant public as such or will be associated with the concept of a jackpot, wealth, money and riches. However, the Opposition Division considers that their distinctiveness is not low because they do not convey any direct or straightforward message in relation to the relevant goods and services. The elements ‘SAVE’ and ‘UP’ have no meaning in Polish and their inherent distinctiveness is normal. The small circle in grey and white colour is of rather decorative nature and less distinctive than the remaining elements of the sign, including the red square with rounded corners since the colour of the latter is quite striking and noticeable and is not commonplace in relation to the goods and services.
Nevertheless, account must be taken in this case that when signs consist of both verbal and figurative components, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, in view of the composition of the contested sign and of the above findings, the contested sign will most probably be identified by ‘SAVE UP’, its strongest and pronounceable component.
Visually, the signs coincide in the sequence ‘SAVE*UP’, which represents the totality of the earlier mark and the word elements ‘SAVE’ and ‘UP’ of the contested sign, written one above the other, wherein ‘UP’ is in bold and bigger letters. The signs differ in the fact that the coinciding element is written in one word in the earlier sign whereas it represents two elements in the contested sign. In addition, the signs differ in the additional elements of the contested sign which have no counterparts in the earlier sign (the colours, the specific layout of the elements, the dollar signs, the circle and the red square). While the verbal components of the contested sign indeed have a stronger impact than the figurative components in the contested sign, the visual differences due to the separation of the coinciding verbal element as well as the whole specific layout of the other elements of the contested sign make the visual coincidences between the signs less prominent and the Opposition Division considers that the signs are similar to a low degree.
Aurally, the pronunciation of the signs coincides in the syllables ‘SA-VE-UP’, present identically in both signs. However, it must be noted that some of the members of the public may pronounce ‘SAVE UP’ of the contested sign with a slight pause between ‘SAVE’ and ‘UP’ because they appear as separate words, which might result in a small difference in the pronunciation of the signs. The dollar symbols of the contested sign will not be referred to aurally. Therefore, depending on whether the contested sign will be pronounced with a longer pause between ‘SAVE’ and ‘UP’ or not, the signs will be aurally highly similar or aurally identical.
Conceptually, neither of the verbal elements included in the signs have a meaning for the public in the relevant territory. Nevertheless, as mentioned above, the contested sign will be associated with the concept of three dollar signs, and possibly with the concept of a jackpot, wealth, money and riches, since three dollar signs in a row on slot machines indicates a win. Therefore, since the contested sign will be associated with a meaning that is not present in the earlier sign, the signs are not conceptually similar. Nevertheless, the weight of this conceptual difference is not significant, since the three dollar element in the contested sign will not be pronounced and it is less important than the verbal elements ‘SAVE UP’ included in the contested sign, as explained above.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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.
Global assessment, other arguments and conclusion
The contested goods and services are identical and similar to the opponent’s goods and services and they are directed both at the public at large and at specialised consumers. Depending on the sophistication and cost of the particular goods and services, the degree of attention of the relevant public may vary from average to high. The earlier trade mark and the contested sign are visually similar to a low degree, aurally identical or highly similar and conceptually not similar but on account of an element in the contested sign which is not as important as the verbal elements ‘SAVE UP’ therein. The similarities between the signs are on account of the common and normally distinctive element ‘SAVEUP’, which constitutes the totality of the earlier mark and represents the verbal elements of the contested sign ‘SAVE UP’.
Although there are certain visual, possible aural, and conceptual differences between the signs, it is considered that the circumstances of the case are such that there is a risk of likelihood of confusion/association between the marks. This is because the consumers will single out the elements ‘SAVE UP’ in the contested sign from the remaining elements. While these remaining elements will not be overlooked, the coincidences between the signs are in the important and distinctive verbal elements of the contested sign coinciding nearly in full with the only element of the earlier mark. It is conceivable that the relevant consumer may perceive the mark applied for as a sub-brand or another version of the earlier mark configured in a different way according to the type of goods/services, which it designates. In addition, 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).
In view of the foregoing and taking into account all the relevant circumstances of the case, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes, that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public in relation to identical and similar goods and services.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No R-272 928. It follows that the contested trade mark must be rejected for all the contested goods and services.
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Begoña URIARTE VALIENTE
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.