OPPOSITION No B 2 205 980

Tikiphone, Centre Valma 440, 98713 Papeete, French Polynesia (opponent), represented by Sodema Conseils S.A., 16 rue du Général Foy, 75008 Paris, France (professional representative)

a g a i n s t

Twitter, Inc., 1355 Market Street, Suite 900, 94103 San Francisco, United States of America (applicant), represented by Cabinet @Mark, 16 rue Milton, 75009 Paris, France (professional representative).

On 03/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 205 980 is partially upheld, namely for the following contested goods and services:

Class 9: Downloadable software in the nature of a mobile application for creating, sharing, disseminating and posting photos, videos, personal and general information for the purposes of social, personal and professional networking; downloadable software in the nature of a mobile application for social and personal networking; downloadable software in the nature of a mobile application for displaying and sharing a user's location and personal preferences and finding, locating, and interacting with other users and places; application programming interface (API) software for allowing data retrieval, upload, access and management; API software for use in building software applications; software for geo-location based advertising and product and service promotions; computer software; downloadable software in the nature of a mobile application; downloadable software to enable uploading, creating, posting, showing, displaying, blogging, sharing and otherwise providing electronic media or information over the internet and other communications networks

Class 35: Online service for connecting social network users with businesses.

Class 38: Telecommunications; providing an online community forum for users to share information, photos, audio and video content, to form virtual communities, and to engage in social networking; providing a platform for mobile device communications.

Class 42: Providing an interactive website; providing a website featuring non-downloadable software; providing temporary use of online non-downloadable software; providing a platform that gives users the ability to upload, exchange and share photos and videos; providing a platform featuring temporary use of non-downloadable software allowing users to upload, post, display, and share videos and digital content; creating an online community for users to engage in social networking; application service provider featuring application programming interface (API) software.

Class 45: Online social networking services; providing a website on the internet for the purpose of social networking.

2. European Union trade mark application No 11 601 606 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASON

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 601 606 for the word mark ‘VINE’, namely against all the goods and services in Classes 9, 38, 42 and 45 and part of the services in Class 35. The opposition is based on French trade mark registration No 3 610 730 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The applicant, in its observations, argues that the earlier mark is not sufficiently substantiated, as the opponent did not submit a representation of the earlier mark in colour while it was clearly indicated in the registration certificate that the mark is registered in colour. In this regard the Opposition Division points out that a colour copy of the earlier mark has been submitted within the deadline and has been accepted by the Office and it was sent to the applicant. This point of the applicant has to be dismissed.

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 services on which the opposition is based are the following:

Class 38: Telecommunication services.

The contested goods and services are the following:

Class 9: Downloadable software in the nature of a mobile application for creating, sharing, disseminating and posting photos, videos, personal and general information for the purposes of social, personal and professional networking; downloadable software in the nature of a mobile application for social and personal networking; downloadable software in the nature of a mobile application for displaying and sharing a user's location and personal preferences and finding, locating, and interacting with other users and places; application programming interface (API) software for allowing data retrieval, upload, access and management; API software for use in building software applications; software for geo-location based advertising and product and service promotions; computer software; downloadable software in the nature of a mobile application; downloadable software to enable uploading, creating, posting, showing, displaying, blogging, sharing and otherwise providing electronic media or information over the internet and other communications networks.

Class 35: Online advertising and marketing services; business networking; online service for connecting social network users with businesses.

Class 38: Telecommunications; providing an online community forum for users to share information, photos, audio and video content, to form virtual communities, and to engage in social networking; providing a platform for mobile device communications.

Class 42: Providing an interactive website; providing a website featuring non-downloadable software; providing temporary use of online non-downloadable software; providing a platform that gives users the ability to upload, exchange and share photos and videos; providing a platform featuring temporary use of non-downloadable software allowing users to upload, post, display, and share videos and digital content; creating an online community for users to engage in social networking; application service provider featuring application programming interface (API) software.

Class 45: Online social networking services; providing a website on the internet for the purpose of social networking.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested downloadable software in the nature of a mobile application for creating, sharing, disseminating and posting photos, videos, personal and general information for the purposes of social, personal and professional networking; downloadable software in the nature of a mobile application for social and personal networking; downloadable software in the nature of a mobile application for displaying and sharing a user's location and personal preferences and finding, locating, and interacting with other users and places; application programming interface (API) software for allowing data retrieval, upload, access and management; api software for use in building software applications; software for geo-location based advertising and product and service promotions; computer software; downloadable software in the nature of a mobile application; downloadable software to enable uploading, creating, posting, showing, displaying, blogging, sharing and otherwise providing electronic media or information over the internet and other communications networks are similar to the opponent’s telecommunication services in Class 38. These goods and services have the same purpose, they are complementary, share the same distribution channels and they target the same relevant public.

Contested services in Class 35

The contested online service for connecting social network users with businesses is similar to the opponent’s telecommunication services in Class 38. These services have the same purpose, share the same distribution channels and are normally provided by the same kinds of undertakings.

When comparing the remaining contested services in Class 35, online advertising and marketing services; business networking, which mainly include services rendered by persons or organizations principally with the object of help in the working or management of a commercial undertaking, or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, with the opponent’s telecommunication services in Class 38, which are services that allow persons to communicate with each other, these are considered dissimilar. These services have a different nature and purpose. They are not complementary neither are they in competition. These services have different distribution channels, target a different public and are normally provided by different companies.

Contested services in Class 38

The contested telecommunications are identically contained in both lists of services.

The contested providing an online community forum for users to share information, photos, audio and video content, to form virtual communities, and to engage in social networking; providing a platform for mobile device communications are included in the broad category of, or overlap with, the opponent’s telecommunication services in Class 38. Therefore, they are identical.

Contested services in Class 42

The contested providing an interactive website; providing a website featuring non-downloadable software; providing temporary use of online non-downloadable software; providing a platform that gives users the ability to upload, exchange and share photos and videos; providing a platform featuring temporary use of non-downloadable software allowing users to upload, post, display, and share videos and digital content; creating an online community for users to engage in social networking; application service provider featuring application programming interface (API) software are similar to the opponent’s telecommunication services in Class 38. These services have the same purpose, share the same distribution channels and are normally provided by the same kinds of undertakings.

Contested services in Class 45

The contested online social networking services; providing a website on the internet for the purpose of social networking are similar to the opponent’s telecommunication services in Class 38. These services have the same purpose, share the same distribution channels and are normally provided by the same kinds of undertakings.

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 both at the public at large, for example downloadable software in the nature of a mobile application for social and personal networking in Class 9, and some are more specialised goods/services directed at business customers with specific professional knowledge or expertise, for example online service for connecting social network users with businesses in Class 45.

The degree of attention is considered to vary from average to high depending on the price, frequency of purchase, (specialised) nature and conditions of the purchased and/or provided goods and services.

c) The signs

	VINE
Earlier trade mark	Contested sign

The relevant territory is France.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both the terms ‘VINI’ of the earlier mark and ‘VINE’ of the contested sign are meaningless and have no relationship with the relevant goods and services. Therefore, they are distinctive for the goods and services at stake. The red curved lines on top of the earlier mark have a mere decorative nature and as such a limited impact on the comparison.

According to the applicant, the contested sign is an English word which refers to any plant having a long slender stem that trails or creeps on the ground or climbs by winding itself about a support or holding fast with tendrils or claspers. Even though a part of the French public would perceive this meaning in the contested sign, it is still distinctive, since it has no relationship or whatsoever in connection with the relevant goods and services. Furthermore, the applicant also points out that the word ‘VINI’ of the earlier mark is a generic term to designate a mobile phone in particular in French Polynesia. However, the Opposition Division is of the opinion that for the majority of the French public this term is perceived as meaningless.

Visually, the signs coincide in the letters ‘V-I-N-*-‘, which all fall at the beginning of the marks, with the only difference the slightly fancy typeface in which this word is written in the earlier mark. However, this stylisation will anyway not lead the consumer’s attention away from the element it seems to embellish. The fact that the letters coincide at the beginning is important, since consumers usually focus more on the beginning of a mark. The marks differ in the last letters ‘I’ of the earlier mark versus ‘e’ of the contested sign and in the figurative elements in the form of the curved lines in the earlier mark. However, when signs consist of both verbal and figurative components, in principle, 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). For all these reasons, the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /V-I-N-*-/, present identically in both signs. The pronunciation differs in the sound of the final letters ‛I’ of the earlier mark versus ‘e’ of the contested sign, being both also a vowel. Therefore, the signs are aurally highly similar.

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 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 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

A likelihood of confusion (including a likelihood of association) 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.

The goods and services at issue have been found to be partly identical, partly similar and partly dissimilar and are directed at the public at large and some at a more specialised public. The degree of attention may vary from average to high and the earlier mark has a normal degree of distinctiveness.

The marks are visually similar to an average degree, aurally similar to a high degree, whereas the semantic perspective does not influence the assessment of the similarity of the marks.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the 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 public and, therefore, the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 3 610 730 for the figurative mark ‘VINI’.

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 goods and services cannot be successful.

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

Saida CRABBE

Chantal VAN RIEL

Richard BIANCHI

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.