OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)


Opposition Division



OPPOSITION No B 2 154 964


Spin AG, Bischof-von-Henle Str. 2b, 93051 Regensburg, Germany (opponent), represented by Langpatent Anwaltskanzlei, Rosenheimer Str. 139, 81671 München, Germany (professional representative)


a g a i n s t


Net Power and Light Inc., 1169 Gorgas Avenue, Suite A, San Francisco, California 94129, United States (of America) (applicant), represented by Orrick Herrington & Sutcliffe (Europe) LLP, 107 Cheapside, London EC2V 6DN, United Kingdom (professional representative).


On 19/11/2015, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 154 964 is upheld for all the contested goods and services, namely:


Class 9: Computer software for receptors and transmitters to process data for remote computing applications; computer software to process data for distributed computing applications; computer software for streaming audio and video content to a variety of remote devices, namely, handheld computers, laptops, personal computers, mobile phones, TVs, projectors, stand-alone hardware decoders and mobile electronic devices; computer software for controlling, viewing, accessing, browsing and utilizing global computer, communication and entertainment networks; computer software for controlling, viewing, accessing, browsing and utilizing global computer, communication and entertainment networks for social networking and entertainment purposes; computer software for accessing files from the internet and from local networks and displaying them on computers and mobile devices; none of the aforementioned goods being for use in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching.


Class 38: Electronic transmission and streaming of digital media content for others via global and local computer networks; electronic transmission of data streams involving a variety of data types, namely, video, audio, human gestures, heterogeneous device input, interactive participation, human emotional cues and human voice; providing access to computer, electronic and online databases; telecommunications services, namely, electronic transmission of data, messages and information; providing access to web sites for others hosted on computer servers accessible via a global computer network; providing access to third party web sites by enabling users to log in through a universal username and password via a global computer network and other communications networks; audio, text and video broadcasting services over computer or other communications networks, namely, uploading, posting, displaying, and electronically transmitting data, information, digital music, audio, video images; telecommunications services, namely, providing online facilities for real-time interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices; providing an online community forum for users to share information, events, sports events, live entertainment, photos, audio and video content about themselves, their likes and dislikes and daily activities, to communicate with their peers, to form virtual communities, and to engage in social networking; video-on-demand transmission services; video broadcasting; electronic transmission of voice, data, images, signals, messages and information about events, sports events, live entertainment; Internet service provider (ISP); providing access to computer databases in the field of social networking; electronic transmission of instant messages and data; electronic transmission of instant messages and data in the field of social networking; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching.


Class 42: Distributed computing platform as a service featuring online non-downloadable software in a distributed computing environment for use in providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases for wireless communication, mobile information access, and remote data management for wireless delivery of data and content to handheld computers, laptops, personal computers, mobile phones, TVs, projectors, stand-alone hardware decoders and mobile electronic devices; distributed computing platform as a service featuring online non-downloadable software in a distributed computing environment allowing users to upload, post and display online digital content for sharing with others for entertainment purposes; computer services, namely, interactive hosting services which allow users to collaborate in the preparation, uploading, downloading, sharing, publishing, reception and transmission of digital content to remote devices; computer services, namely, interactive hosting services which allow users to collaborate in the preparation, uploading, downloading, sharing, publishing, reception and transmission of digital content to remote devices for the purpose of communicating and sharing experiences and for entertainment purposes; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching.


Class 45: On-line social networking services; providing a social networking website for entertainment purposes; providing on-line computer databases and on-line searchable databases in the field of social networking.



2. Community trade mark application No 11 391 711 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.


3. The applicant bears the costs, fixed at EUR 650.



REASONS:


The opponent filed an opposition against some of the goods and services of Community trade mark application No 11 391 711, namely against some of the goods and services in Classes 9 and 42 and all of the services in Classes 38 and 45. The opposition is based on Community trade mark registration No 002 169 605, Community trade mark application No 11 100 344 and German trade mark No 30 058 583. In relation to Community trade mark application No 11 100 344, the opponent invoked Article 8(1)(a) and (b) CTMR. In relation to Community trade mark registration No 002 169 605 and German trade mark No 30 058 583, the opponent invoked Article 8(1)(b) CTMR.




SPIN


SPIN



Earlier trade mark No 11 100 344


Contested sign


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 Community trade mark application No 11 100 344.



PRELIMINARY REMARK


According to Article 41(1) CTMR ‘within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

  1. by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5).


Furthermore, according to Article 8(1)(a) and (b), ‘upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered(…)’.


According to Article 8(2)(a) CTMR, for the purposes of the paragraph 1, Earlier trade marks means trade marks of the followings kinds [CTMs, national marks, IRs with effect in a Member State, IRs with effect in the EU] with a date of application for registration which is earlier than the date of application for registration of the Community trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks.


In the present case, the contested trade mark was published on 03/12/2012 with four priorities accepted from the United States, dated 04/06/2012. The opposition is based on, inter alia, Community trade mark application No 11 100 344, which was published on 06/08/2012 without any priority.


The priorities invoked relate to the whole scope of the opposition.


Therefore, Community trade mark application No 11 100 344 is not an earlier right, taking into account the priorities claimed.


The examination of the opposition will continue in relation to other earlier trade marks, under Article 8(1)(b) CTMR.



LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR


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 Division will proceed to examine the opposition in relation to the opponent’s Community trade mark registration No 2 169 605 and German trade mark registration No 30 058 583.



  1. The goods and services


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


CTM SPINCHAT No 2 169 605


Class 9: Computer programs, none relating to the delivery of sales effectiveness services, business consultancy services, management consultancy services, education and training services for business management over the internet.


Class 25: Clothing, in particular including caps, T-shirts.


Class 35: Advertising; marketing, market research and market analysis, business consultancy, negotiating and concluding commercial transactions for others, arranging contracts for others, arranging contracts for the buying and selling of goods, advertising on data networks, company and product presentations on data networks; opinion polling; none of the aforesaid services for or relating to the delivery of sales effectiveness services, business consultancy services, management consultancy services, education and training services for business management over the internet.


Class  42: Computer programming services (except programs for the textile industry), none relating to the delivery of sales effectiveness services, business consultancy services, management consultancy services, education and training services for business management over the Internet; Operating a computer platform and providing access to a computer platform or program which facilitates Internet communication, especially in form of communities and chats; Operating a message board system and providing access to a message board system, especially in form of virtual guestbooks and online discussion boards.


The opponent invoked Class 41, but the CTM was no longer registered for that class.


German trade mark No 30 058 583


Class 9: Computer programs, none relating to the sales effectiveness services, business consultancy services, management consultancy services and education as well as further training services in the field of business management over the internet.


Class 38: Operating a computer platform and providing access to computer platforms and computer programs for communication over the Internet, especially in form of communities and chats; operating a message board system and providing access to such system, especially in form of a virtual guestbook and of an online discussion board.


Class 42: Computer programming, except for the textile industry and for services in the field of sales effectiveness services, business consultancy services, management consultancy services and education as well as further training services in the field of business management over the Internet.


The contested goods and services, after a limitation made by the applicant on 16/08/2013, are the following:


Class 9: Computer software for receptors and transmitters to process data for remote computing applications; computer software to process data for distributed computing applications; computer software for streaming audio and video content to a variety of remote devices, namely, handheld computers, laptops, personal computers, mobile phones, TVs, projectors, stand-alone hardware decoders and mobile electronic devices; computer software for controlling, viewing, accessing, browsing and utilizing global computer, communication and entertainment networks; computer software for controlling, viewing, accessing, browsing and utilizing global computer, communication and entertainment networks for social networking and entertainment purposes; computer software for accessing files from the internet and from local networks and displaying them on computers and mobile devices; none of the aforementioned goods being for use in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching.


Class 38: Electronic transmission and streaming of digital media content for others via global and local computer networks; electronic transmission of data streams involving a variety of data types, namely, video, audio, human gestures, heterogeneous device input, interactive participation, human emotional cues and human voice; providing access to computer, electronic and online databases; telecommunications services, namely, electronic transmission of data, messages and information; providing access to web sites for others hosted on computer servers accessible via a global computer network; providing access to third party web sites by enabling users to log in through a universal username and password via a global computer network and other communications networks; audio, text and video broadcasting services over computer or other communications networks, namely, uploading, posting, displaying, and electronically transmitting data, information, digital music, audio, video images; telecommunications services, namely, providing online facilities for real-time interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices; providing an online community forum for users to share information, events, sports events, live entertainment, photos, audio and video content about themselves, their likes and dislikes and daily activities, to communicate with their peers, to form virtual communities, and to engage in social networking; video-on-demand transmission services; video broadcasting; electronic transmission of voice, data, images, signals, messages and information about events, sports events, live entertainment; Internet service provider (ISP); providing access to computer databases in the field of social networking; electronic transmission of instant messages and data; electronic transmission of instant messages and data in the field of social networking; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching.


Class 42: Distributed computing platform as a service featuring online non-downloadable software in a distributed computing environment for use in providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases for wireless communication, mobile information access, and remote data management for wireless delivery of data and content to handheld computers, laptops, personal computers, mobile phones, TVs, projectors, stand-alone hardware decoders and mobile electronic devices; distributed computing platform as a service featuring online non-downloadable software in a distributed computing environment allowing users to upload, post and display online digital content for sharing with others for entertainment purposes; computer services, namely, interactive hosting services which allow users to collaborate in the preparation, uploading, downloading, sharing, publishing, reception and transmission of digital content to remote devices; computer services, namely, interactive hosting services which allow users to collaborate in the preparation, uploading, downloading, sharing, publishing, reception and transmission of digital content to remote devices for the purpose of communicating and sharing experiences and for entertainment purposes; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching.


Class 45: On-line social networking services; providing a social networking website for entertainment purposes; providing on-line computer databases and on-line searchable databases in the field of social networking.


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 list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.


As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 for receptors and transmitters to process data for remote computing applications; computer software to process data for distributed computing applications; computer software for streaming audio and video content to a variety of remote devices, namely, handheld computers, laptops, personal computers, mobile phones, TVs, projectors, stand-alone hardware decoders and mobile electronic devices; computer software for controlling, viewing, accessing, browsing and utilizing global computer, communication and entertainment networks; computer software for controlling, viewing, accessing, browsing and utilizing global computer, communication and entertainment networks for social networking and entertainment purposes; computer software for accessing files from the internet and from local networks and displaying them on computers and mobile devices; none of the aforementioned goods being for use in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching are similar to the opponent’s computer programs, none relating to the sales effectiveness services, business consultancy services, management consultancy services and education as well as further training services in the field of business management over the internet of the earlier German trade mark, as they have the same nature (computer software/computer programs, which are a set of instructions for a device to perform some tasks). They can have the same distribution channels, can be provided by the same undertakings and target the same users. Therefore, these goods are similar.



Contested services in Class 38


The contested providing an online community forum for users to share information, events, sports events, live entertainment, photos, audio and video content about themselves, their likes and dislikes and daily activities, to communicate with their peers, to form virtual communities, and to engage in social networking; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching is similar to the opponent’s providing access to computer platforms and computer programs for communication over the Internet, especially in form of communities and chats of the earlier German trade mark. The services have the same purpose of providing access to an online community platform. They can be provided by the same undertakings and target the same end users. Therefore, these services are similar.


The contested providing access to computer, electronic and online databases; providing access to web sites for others hosted on computer servers accessible via a global computer network; providing access to third party web sites by enabling users to log in through a universal username and password via a global computer network and other communications networks; providing access to computer databases in the field of social networking; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching are similar to the opponent’s providing access to computer platforms and computer programs for communication over the Internet, especially in form of communities and chats of the earlier German trade mark. These services are all general services for transfer of and access to information. They may have the same provider and target the same consumers.


The contested telecommunications services, namely, electronic transmission of data, messages and information; telecommunications services, namely, providing online facilities for real-time interaction between and among users of computers, mobile and handheld computers, and wired and wireless communication devices; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching are similar to the opponent’s providing access to computer platforms and computer programs for communication over the Internet, especially in form of communities and chats of the earlier German trade mark. They have similar purposes (communication services). They can be provided by the same undertakings and target the same users. Therefore, these services are similar.


The contested video-on-demand transmission services; video broadcasting; audio, text and video broadcasting services over computer or other communications networks, namely, uploading, posting, displaying, and electronically transmitting data, information, digital music, audio, video images; electronic transmission and streaming of digital media content for others via global and local computer networks; electronic transmission of data streams involving a variety of data types, namely, video, audio, human gestures, heterogeneous device input, interactive participation, human emotional cues and human voice; electronic transmission of voice, data, images, signals, messages and information about events, sports events, live entertainment; electronic transmission of instant messages and data; electronic transmission of instant messages and data in the field of social networking; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching are similar to the opponent’s providing access to computer platforms and computer programs for communication over the Internet, especially in form of communities and chats of the earlier German trade mark. They can have the same distribution channels and end users. Furthermore, they can be provided by the same undertakings.


The contested internet service provider (ISP); none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching is linked to the opponent’s providing access to computer platforms and computer programs for communication over the Internet, especially in form of communities and chats of the earlier German trade mark, in the sense that computer platforms and computer programs for communication are connected to the Internet. An internet service provider provides access to the Internet and thereby enables use of the opponent’s services. The services are, therefore, complementary. Moreover, these services can be offered by the same companies and target the same end user. Therefore, these services are similar.


Contested services in Class 42


The contested distributed computing platform as a service featuring online non-downloadable software in a distributed computing environment for use in providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases for wireless communication, mobile information access, and remote data management for wireless delivery of data and content to handheld computers, laptops, personal computers, mobile phones, TVs, projectors, stand-alone hardware decoders and mobile electronic devices; distributed computing platform as a service featuring online non-downloadable software in a distributed computing environment allowing users to upload, post and display online digital content for sharing with others for entertainment purposes; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching are similar to the opponent’s computer programming, except for the textile industry and for services in the field of sales effectiveness services, business consultancy services, management consultancy services and education as well as further training services in the field of business management over the Internet of the earlier German trade mark. All the services relate to information technology. They have the same producers (computer programmers and software designers) and they are usually provided by the same companies. Therefore, these services are similar.


The contested computer services, namely, interactive hosting services which allow users to collaborate in the preparation, uploading, downloading, sharing, publishing, reception and transmission of digital content to remote devices; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching are similar to the opponent’s computer programming, except for the textile industry and for services in the field of sales effectiveness services, business consultancy services, management consultancy services and education as well as further training services in the field of business management over the Internet of the earlier German trade mark. All the services relate to information technology. They have the same producers (computer programmers and software designers) and they are usually provided by the same companies. Therefore, these services are similar.


The contested computer services, namely, interactive hosting services which allow users to collaborate in the preparation, uploading, downloading, sharing, publishing, reception and transmission of digital content to remote devices for the purpose of communicating and sharing experiences and for entertainment purposes; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching are similar to the opponent’s computer programming, except for the textile industry and for services in the field of sales effectiveness services, business consultancy services, management consultancy services and education as well as further training services in the field of business management over the Internet of the earlier German trade mark. These services relate to computers and they have the same nature. They can be provided by the same undertakings (computer programmers and software designers). They have the same end users and they can have the same distribution channels. Therefore, these services are similar.



Contested services in Class 45


The contested on-line social networking services are mainly a platform to build social networks or social relations among people who, for example, share interests, activities, backgrounds or real-life connections. A social network service consists of a representation of each user (often a profile), his/her social links and a variety of additional services. Most social network services are web-based and provide means for users to interact over the internet, such as email and instant messaging. Social networking sites allow users to share ideas, pictures, posts, activities, events and interests with people in their network.


The contested services can be provided together with the opponent’s providing access to computer platforms and computer programs for communication over the Internet, especially in form of communities and chats in Class 38 of the earlier German trade mark. They can have the same distribution channels. They are also complementary. These services are deemed to be similar.


The contested providing a social networking website for entertainment purposes; providing on-line computer databases and on-line searchable databases in the field of social networking and the opponent’s providing access to computer platforms and computer programs for communication over the Internet, especially in form of communities and chats of the earlier German trade mark have in common the aim of providing computer-based facilities for communication in social networking contexts. They have the same nature and purpose. They can also have the same distribution channels. Therefore, these services are deemed to be similar.



  1. The signs



SPINCHAT


  1. CTM No 2 169 605




  1. German Trade mark No 30 058 583



SPIN



Earlier trade mark


Contested sign


The relevant territory is the European Union and Germany.


The earlier Community trade mark No 1 is a word mark consisting of the verbal element ‘SPINCHAT’, whereas the earlier German trade mark No 2 is a figurative mark consisting of the word ‘SPIN’ and a figurative element, which is a red circle around the stylised letter ‘I’ written in white with the extremities of this letter and its dot connected to the edge of the circle. The remaining letters, ‘SP*N’, are written in bold, slightly stylised upper case letters.


The contested sign is a word mark, consisting of the word ‘SPIN’


Visually, the signs are similar to the extent that they coincide in the verbal element ‘SPIN’. However, they differ in the figurative device of earlier mark No 2 and the final sequence, ‘CHAT’, of earlier mark No 1.


Aurally, the pronunciation of earlier mark No 2 and the contested sign are identical. The pronunciation differs in the syllable CHAT of earlier mark No 1.


Conceptually, although the earlier mark ‘SPINCHAT’ as a whole does not have any meaning for the public in the relevant territory, the verbal element ‘SPIN’, in this earlier mark and the contested sign, will be perceived by the English-speaking public as meaning a swift rotating motion or instance of spinning. The Dutch-speaking public will perceive it as meaning ‘spider’, the Romanian-speaking public as meaning ‘spin’ (physics) or ‘thorn’ and the Bulgarian-speaking public as meaning ‘spin’ (physics).


The secondary element CHAT of the earlier mark Nº1 is an English word meaning ‘to talk in a friendly way’.


Therefore, the signs are conceptually similar, at least for a part of the relevant public, to the extent that they coincide in the verbal element ‘SPIN’.


Earlier mark No 2 and the contested sign have no meaning in the relevant territory, Germany.


Since a conceptual comparison between earlier mark No 2 and the contested sign is not possible, the conceptual aspect does not influence the assessment of the similarity of this earlier mark and the contested sign.


Taking into account the abovementioned visual and aural coincidences, as well as conceptual coincidence for a part of the relevant public in respect of earlier mark No 1, the signs under comparison are similar.



  1. Distinctive and dominant elements of the signs


In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.


The marks have no element that could be clearly considered more distinctive than other elements.


Nevertheless, the element ‘CHAT’ of earlier mark No 1 will be associated with ‘online discussion’. However, the distinctiveness of that element for the services in Class 42 has not been taken into account as these services have not used in the comparison to the contested goods and services.


The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.



  1. Distinctiveness of the earlier marks


The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.


Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, each of the earlier trade marks, 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 marks must be seen as normal, despite the presence of a non-distinctive element in the marks, as stated above in section c) of this decision.



  1. 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 partly at a specialised public in the field of information technology or at companies having a need for this (e.g. in Class 42). The degree of attention is considered to be average.



  1. Global assessment, other arguments and conclusion


The goods and services are identical and similar.


Earlier mark No 2 and the contested sign are aurally identical. As the signs have no meaning in the relevant territory (Germany), the conceptual aspect does not influence the assessment of the similarity of the signs.


It is considered that, when a sign consists of both word and figurative components, as is the case with the contested mark, the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will most readily refer to a sign by its verbal component rather than by describing the elements of stylisation. This is the case when the elements of stylisation are limited to a red circle around the stylised letter ‘I’.


Earlier trade mark No 2 and the contested sign are visually similar to the extent that they coincide in the word ‘SPIN’. This element constitutes the entirety of the contested sign and is the only verbal element in the earlier trade mark, which will be read and pronounced.


Furthermore, earlier trade mark No 1 and the contested sign are visually, aurally and, at least for a part of the relevant public, conceptually similar to the extent that they have the sequence ‘SPIN’ in common.


The letter sequence ‘SPIN’, placed at the beginning of the earlier trade mark, is entirely contained in the contested sign. The dissimilarities between the signs are confined to the final sequence, ‘CHAT’, of the earlier mark.


The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.


Moreover, the two signs, in view of the coinciding words, could be perceived as two signs used on complementary goods/services coming from the same undertaking or economically linked undertakings.


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 Community trade mark registration No 2 169 605 and German trade mark No 30 058 583. It follows that the contested trade mark must be rejected for all the contested goods and services.



COSTS


According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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


Richard THEWLIS


Julie GOUTARD

Orlin DENKOV




According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.


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