OPPOSITION No B 2 442 286

Itaú Unibanco S.A., Praça Alfredo Egydio de Souza Aranha 100 Torre Olavo Setubal, São Paulo, Brasil (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Alibaba Group Holding Limited, Fourth Floor, One Capital Place, P.O. Box 847, George Town, Grand Cayman, Caiman Islands (applicant), represented by
Dechert LLP, 160 Queen Victoria Street, London EC4V 4QQ, United Kingdom (professional representative).

On 25/02/2016, the Opposition Division takes the following

DECISION:

1. The decision taken on opposition No B 2 442 286, dated 16/11/2015, is hereby revoked and replaced by the present decision.

2. Opposition No B 2 442 286 is partially upheld, namely for the following contested goods and services:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; computer programs; software for processing electronic payments to and from others; authentication software; computer software supplied on the Internet; on-line electronic publications (downloadable from the Internet or a computer network or a computer database); downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet; Downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; Downloadable computer software for accessing, viewing, and controlling remote computers and computer networks; Downloadable electronic publications in the nature of articles and instructional materials in the fields of telecommunications, the Internet, training, business, sales, and marketing; computer software, computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal media players; mobile telephones; smart phones; digital cameras; computer workstations; servers; computer and telecommunications networking hardware; computer network adaptors, switches, routers and hubs; wireless and wired modems and communication cards and devices; laptop holders, computer bags; fire-extinguishing apparatus; computer hardware and firmware; computer software (including software downloadable from the Internet); compact discs; digital music (downloadable from the Internet); telecommunications apparatus; mouse mats; mobile phone handsets; mobile phone accessories; downloadable games, pictures, motion pictures, movies and music; alarm systems; security cameras; mobile radio and television broadcasting units; television broadcasting equipment; cameras; video cameras; headphones; ear pieces; speakers; Global Positioning System (GPS) apparatus and equipment; computer, electronic and video games programmes and software (including software downloadable from the Internet); liquid crystal displays for telecommunications and electronic equipment; set top box; remote control; data storage programs; signboards; encoded or magnetic bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers; computer software applications, downloadable; electronic book readers; baby monitors; video baby monitors; tablet computers; encoded key cards; memory cards for video game machines; all included in class 9.

Class 16: Newspapers; magazines; periodicals; journals; paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; books, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels; carry bags of paper, cardboard and plastic; printed telephone, facsimile, electronic mail and web site directories; cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards; marketing and promotional materials; printed advertisements; user manuals; packaging materials; paper party bags; page holders; all included in class 16.

Class 35: Advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; trade fairs; opinion polling; data processing; provision of business information; advertising agency services; advertising services provided for others; database management; compilation of information into computer databases; business consulting services; business consulting services in the field of web based events, conferences, training programs, learning programs, and seminars; business consulting services in the field of delivering web-based knowledge; business consulting services in the field of online collaboration and collaboration technologies; business consulting services in the fields of sales and marketing; business project management services; business project management services relating to development, set up, staging, production, recording, monitoring and follow-up for web based events, conferences, training programs, learning programs, and seminars; market research and business consulting services; business consultancy services relating to facilitating the transaction of business via local and global computer networks by locating and providing referrals for the delivery of a wide variety of business and consumer products and services; dissemination of business information of goods and services of others via local and global computer networks; business consultancy services relating to providing a web site on a global computer network by which third parties can offer and source goods and services, place, determine the status of and fulfill trade leads and orders, enter into contracts and transact business; providing computerized online ordering services for scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, computer programs, software for processing electronic payments to and from others, authentication software, computer software supplied on the Internet, on-line electronic publications (downloadable from the Internet or a computer network or a computer database), downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet, Downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser, Downloadable computer software for accessing, viewing, and controlling remote computers and computer networks, Downloadable electronic publications in the nature of articles and instructional materials in the fields of telecommunications, the Internet, training, business, sales, and marketing, computer software, computer peripherals, notebook computers, laptop computers, portable computers, handheld computers, personal digital assistants, personal media players, mobile telephones, smart phones, digital cameras, computer workstations, servers, computer and telecommunications networking hardware, computer network adaptors, switches, routers and hubs, wireless and wired modems and communication cards and devices, laptop holders, computer bags, fire-extinguishing apparatus, computer hardware and firmware, computer software (including software downloadable from the Internet), compact discs, digital music (downloadable from the Internet), telecommunications apparatus, mouse mats, mobile phone handsets, mobile phone accessories, downloadable games, pictures, motion pictures, movies and music, alarm systems, security cameras, mobile radio and television broadcasting units, television broadcasting equipment, cameras, video cameras, headphones, ear pieces, speakers, Global Positioning System (GPS) apparatus and equipment, computer, electronic and video games programmes and software (including software downloadable from the Internet), liquid crystal displays for telecommunications and electronic equipment, set top box, remote control, data storage programs, spectacles and sunglasses, signboards, encoded or magnetic bank credit, debit, cash and identification cards, automatic teller machines, cash dispensers, computer software applications, downloadable, electronic book readers, toner cartridges, unfilled, for printers and photocopiers, baby monitors, video baby monitors, lens hoods, tablet computers, encoded key cards, 3D spectacles, memory cards for video game machines, Newspapers, magazines, periodicals, journals, paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging (not included in other classes), printers’ type, printing blocks, books, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels, carry bags of paper, cardboard and plastic, printed telephone, facsimile, electronic mail and web site directories, cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards, marketing and promotional materials, printed advertisements, user manuals, packaging materials, tissues, handkerchiefs made of paper, models and figurines made of paper, paper party bags, page holders; advertising of goods and services of others via local and global computer networks; international import and export agency services; rental of advertising space on communication media; providing a directory of third party web sites to facilitate business transactions; business consultancy services relating to operating an electronic marketplace for the buyers and sellers of goods and/or services on a global computer network; business assistance relating to facilitating business transaction via local and global computer networks; corporate management consultancy services; marketing and promotion services; publication of publicity materials; marketing of vacant premises; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; computer data processing; sales, business, promotional information services; telephone answering (for unavailable subscribers); telephone answering (for others); personnel management; provision of sales, business, advertising and promotional information through a global computer network and via the Internet; presentation of goods on communication media for retail purposes; retail and wholesale of telephones, electronic and telecommunications goods, computer hardware and computer software, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound, printed matter, stationery and magnetic and non magnetically encoded cards, computers, calculating machines, electrical, photographic, cinematographic and optical apparatus and instruments, magazine, cards; typewriters and office requisites; direct mail advertising; buying and selling agency services; selection of goods and procurement of goods for individuals and businesses; ordering services [for others]; secretarial services; provision of business statistical information; organisation of exhibitions for commercial or advertising purposes; business assistance services relating to compilation and rental of mailing lists; business investigation; business administration services for the processing of sales made on the Internet; business referral services and personnel placement; import-export clearance agencies (import-export agency services); agency for newspapers subscriptions; document reproduction; transcription (including stencil-paper writing); rental of office equipment; customer relationship management; business management services relating to electronic commerce; business management and administration services relating to sponsorship programmes; accounting services; charitable services, namely providing administrative services for the organizing and conducting volunteer programmes and community service projects; rental of sales stands; provision of commercial and business contact information; search engine optimization; web site traffic optimization; pay per click advertising; commercial intermediation services; business management for freelance service providers; negotiation and conclusion of commercial transactions for third parties; updating and maintenance of data in computer databases; business project management services for construction projects; providing business information via a web site; consultancy, information and advisory services relating to the aforesaid services; all included in class 35.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; clearing and reconciling financial transactions via a global computer network; online banking services and financial services; credit card services, processing and transmission of bills and payments thereof, and providing insurance for financial transactions; funds transfer services; transmission of funds by electronic means for others; transfer of payments for others via the internet; financial services in the nature of billing and payment processing services; arrangement and management of leases and tenancy; renting and leasing of real estate; real estate appraisal; real estate valuation, real estate financing, real estate investment; real estate brokerage services; real estate agency services; housing agency services; actuarial services; real estate management and consultancy services; rent collection; rental of offices (real estate); rental of apartments and flats; provision of financial information via the Internet; safety deposit and issuing of travel vouchers services; capital investments; financial evaluation [insurance, banking, real estate]; financial and asset management services; insurance and financial services; financial services provided by telecommunication means; financial consultancy and advisory services; online banking; banking services provided on-line from a computer databases or the Internet; securities brokerage services, stock exchange quotation services; stocks and bonds brokerage, financial analysis; debit card services, charge card services and cheque guarantee services; banking, savings account and investment services; financial clearing services; credit verification via global computer information network; electronic credit risk management services; electronic purchase payment and electronic bill payment services; financial accounts debiting and crediting services; electronic banking services; issuance of stored value cards, charge cards and debit cards; telephone credit cards services; information services relating to finance and insurance, provided online from a computer database or Internet; agency for collection of gas and electricity fees; antique appraisal; art appraisal; jewelry appraisal; used car appraisal; tax information supply; charitable fund raising; organizing of charitable collections; charitable collections; rental of paper money and coin counting or processing machines; rental of cash dispensers or automated-teller machines; online payment services; arranging finance for construction projects; consultancy, information and advisory services relating to the aforesaid services; import-export clearance agencies (custom clearance); all included in class 36.

Class 38: Telecommunications services; providing web-based multimedia teleconferencing, videoconferencing, and online meeting services that allow simultaneous and asynchronous viewing, sharing, editing, and discussion of documents, data, and images by participants via a web browser; providing customers with online access to online reports regarding the performance, effectiveness, and status of web-based applications, teleconferences, videoconferences, and meetings; providing users with secure remote access via the Internet to private computer networks; providing online collaboration services allowing users to access applications, platforms, jointly-shared documents, data, task lists, and discussion forums; Internet broadcasting services, providing an online database of information regarding web-based broadcasting complaint submission platform; provision of telecommunication access and links to computer database and to the Internet; electronic communication services; interactive telecommunications services; telecommunication of information (web pages), computer programs and data; providing telecommunications connections to the Internet or data bases; provision of telecommunication access to world-wide web facilities and structures; communication by computer terminals; communication by fibre optic networks; computer aided transmission of messages and images; facsimile transmission; message sending; paging services; rental of modems; data communication services by electronic means; rental of telecommunication equipment; electronic message sending, receiving and forwarding services; collection, transmission and delivery of data by electronic means; collection, transmission and delivery of mail messages, still picture and/or moving picture information such as characters, messages, music and images, telegrams, information and data by mechanical, electronic, telephone, telex, cable, computer and satellite means; transmission, broadcast and reception of audio, video, still and moving images and data whether in compressed or uncompressed form and whether in real or delayed time; electronic messaging, conferencing and order-transmission services; video conferencing services; communication by electronic bulletin board that enables users to perform a real-time interactive talk between a computer terminal and an electronic bulletin board containing still picture and moving picture information and voice information such as characters; providing electronic bulletin boards and message boards for transmission of messages; provision of online discussion forums; television broadcasting services; broadcasting and transmission of radio and television programmes; music broadcasting; transmission of music, films, interactive programmes, videos, electronic computer games; transmission of information relating to on-line shopping and general retail services; video-on-demand transmission services; news agency services; providing access to computer database on the global computer network for searching and retrieving information, data, web sites and resources available on computer networks; providing user access to a computer database containing electronic publications, bulletin boards, database and information accessible via computer; operation of chat rooms (chat room services); multiple user access to global computer information networks for the transfer and dissemination of a wide range of information; providing access to a website on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to an interactive website on a global computer network for third parties to post information, respond to requests and place and fulfill orders for products, services and business opportunities; communication services, namely, text and numeric digital messaging services; transmission of information by data communications for assisting decision making; transmission of information through video communication systems; web conferencing services; electronic communication services for establishing virtual chatrooms via text messaging; providing electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business leads and opportunities; providing an online interactive bulletin board for the posting, promotion, sale and resale of items via a global computer network; providing electronic mail and electronic mail forwarding services; audio and video communication via computers and computer networks, and via a global communications network; providing computer access and leasing access time to online interactive bulletin boards and databases; providing access to electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business opportunities; providing access to electronic calendar, address book and electronic notebook, via local and global computer networks; providing distant video and/or telephone conferencing access and facilities; providing computer links to third party web sites to facilitate e-commerce and real world business transactions; consultancy, information and advisory services relating to the aforesaid services; all included in class 38.

Class 42: Scientific and technological services and research and design relating thereto, industrial analysis and research services; design and development of computer hardware and software; computer services in connection with transmitting information, data, documents, and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services providing software in the fields of web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; technical support services relating to computer software and applications provided online, by email and by telephone; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, engage in social networking, and exchange documents; computer technology advice provided to Internet users by means of a support hotline; computer service relating to creating indexes of information, sites and resources on computer networks; providing search engines; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players; design of mobile telephones and smart phones; design of digital cameras; computer services; computer programming; computer integration services; computer analysis services; computer programming in relation to the defence against virus; computer system software services; providing direct connection services between computer users for exchanging data; computer software design; computer system design; design and development of webpages; hosting webpages for others; hosting computer application software for searching and retrieving information from databases and computer networks; providing technical information at the specific request of end-users by means of telephone or global computer network; consultancy services in relation to computer software; computer services relating to customized searching of computer databases and websites; computer and electronic signal coding and decoding; conversion of physical data and documents into electronic media format; testing and evaluation services; computer and network information services; provision of computer security risk management programs; computer security information, knowledge, and testing services; quality assurance services; computer services relating to certification of business transactions and preparation of reports therefore; access control to (security services for-) computers, electronic networks and databases; security of data transmission and of transactions via computer networks; consultancy in the field of data security; technological consultancy concerning securing telecommunications; computerized communication network security services; providing information in the fields of Internet, world wide web and computerized communication network security and the secure transmission of data and information; consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services, secure data and information transmission services; authentication services for computer security; on-line authentication of electronic signatures; off-site data backup; electronic data storage; providing information on computer technology and programming via a web site; cloud computing; consultancy, information and advisory services relating to the aforesaid services; all included in class 42.

3. Community trade mark application No 12 827 101 is rejected for all the above goods and services. It may proceed for the non-contested services in Classes 39, 41 and 45, and for the contested goods and services, found to be dissimilar.

4. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 12 827 101, namely against all the goods and services in Classes 9, 16, 35, 36, 38 and 42. The opposition is based on Community trade mark registration No 9 903 576. The opponent invoked Article 8(1)(b) CTMR.

DECISION ON THE REVOCATION – Article 80 CTMR

According to Article 80 CTMR, where the Office has made an entry in the Register or taken a decision that contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.

On 18/12/2015, the Office informed the parties that it had the intention to revoke the decision of 16/11/2015. The reason was that it contained an obvious procedural error attributable to the Office, namely that the contested services in Class 36 were overlooked in the comparison and dictum, having this an impact on the outcome of the decision. This error was notified to the Office by the opposing party, by letter of 16/12/2015.

The applicant, in its letters of 23/12/2015, 11/01/2016, 11/01/2016 and 19/01/2016 requested further explanations from the Office regarding the reasons for the decision to be revoked, which were given in the corresponding replies. A copy of the communications between the Office and the applicant were sent to the opposing party for information purposes.

The Opposition Division considered, in the decision No B 2 442 286 of 16/11/2015, that the opposition was partially upheld, namely for the goods and services found to be identical or similar (even if only to a low degree). It is therefore relevant to establish if the services in Class 36, which were overlooked, are similar or identical to the goods and services on which the opposition is based, as this has a clear impact on the outcome. It is therefore necessary to revoke the abovementioned decision and to issue a new one, in which the services in Class 36 are taken into account in the comparison and dictum.

In view of the foregoing, and on the basis of the data on file, the decision adopted by the Opposition Division on 16/11/2015 in the opposition B 2 442 286 is hereby revoked and is replaced by the present decision.

DECISION ON OPPOSITION

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.

1. The goods and services

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

Class 9: Apparatus for recording, transmission or reproduction of data, sound or images, scientific, signalling or checking (supervision) apparatus and instruments, data processing apparatus, intercommunication apparatus, electronic and electric apparatus and instruments for depositing and withdrawing money, electric and electronic apparatus and instruments for depositing cheques, automatic dispensers, automatic teller machines, machines for distributing notes, tickets, statements of account and extracts of accounts, optical or magnetic data carriers, smartcards or cards with microprocessors, magnetic cards, identification cards, being magnetic or having a microprocessor, payment, credit or debit cards, being either magnetic or having a microprocessor, bank cards, electronic payment cards, magnetising and demagnetising apparatus for magnetic tapes, magnetic encoders, computer hardware and software enabling full banking, financing and insurance services to be provided, in particular to be provided remotely, namely computer apparatus and devices, recorded computer programs, software (recorded programs), accounts management software, secure payment software for online electronic communications networks, electronic payment transaction software, electronic payment apparatus and instruments, computer equipment for electronic payment, namely payment terminals, electronic payment systems, payment card readers, central processors, automatic dispensers, cash registers, accounting machines, bar-code readers, false coin detectors, apparatus and equipment for authenticating coins and notes, calculating machines, electronic diaries, video cassettes, DVDs, CD-ROMs, magnetic discs, compact discs (audio-video), optical discs, optical compact discs, floppy discs, video screens, interfaces (computers), readers (computers), bank card readers, payment terminals, monitors (computer programs), computers, computer peripherals, modems, chips (integrated circuits), recorded operating system programs (for computers), radio apparatus, radiopaging apparatus, radiotelephony sets, receivers (audio-video), telephone transmitters, telephone apparatus, portable telephones, portable telephones equipped for electronic payment, television apparatus, coin-operated mechanisms for television sets, time recording apparatus, transmitters (telecommunications), central processing units (processors), electric monitoring apparatus, alarms, transmitters (telecommunications), acoustic alarms, sirens, detectors, smoke alarms, alarm or surveillance system detectors, alarm or surveillance system keypads, alarm or surveillance system controls and remote controls, video cameras, surveillance cameras, electric or electronic locks, electric or electronic devices for opening or closing doors or windows, electric door closers, electronic publications being downloadable, electronic apparatus and machines for printing, checking and sorting banking, financial or accounting documents.

Class 16: Printed matter, stationery, office requisites (except furniture), instructional and teaching material (except apparatus), tickets, brochures, calendars, note-books, cards, non-magnetic payment cards, non-magnetic ID cards, bank statements, catalogues, cheques, chequebooks, circulars, contracts (forms), writing materials, writing instruments, files (stationery), forms, newspapers, booklets, manuals, periodicals, sleeves for discs, pouches for bank documents, chequebook holders, prospectuses, publications, directories, bookmarks, credit card imprint apparatus, not electric, trays for arranging and counting coins and notes.

Class 35: Provision of business information; business information and accounting advisory services; business information services provided on-line from a computer database or the internet; business inquiries; business investigation and research; preparation of business reports; collection, preparation, composition, storage, processing, acquisition and provision of business information, data, statistics and indices; compilation of business information; provision of computerized business information; business management; business administration; business analysis; market analysis services; market analysis and research; electronic data storage; accountancy services; data processing; acquisition of business information relating to company activities and company status; advising commercial and industrial enterprises in the conduct of their business; analysis of business information and business statistics; assistance, advisory services and consultancy with regard to business planning, business analysis, business management, and business organization; advisory and consultancy services in relation to business acquisitions and mergers; business advice and analysis of markets; provision of commercial information; business advisory services and assistance relating to franchising; business assistance relating to the establishment of franchises; dissemination of data relating to business and business information; advertising services for promoting the brokerage of stocks and other securities as well as banking, financial, fiduciary and investment services; business accounts management; business advice relating to financial re-organization; business advice relating to growth financing; economic forecasting for business purposes and economic information services for business purposes; financial statement preparation and analysis for businesses; economic forecasting; information, advisory and consultancy services in relation to all of the aforementioned services.

Class 36: Financial affairs; monetary affairs; real estate affairs; insurance; including especially banking services; home banking services, banking affairs; monetary services; financial services; financing services; credit services; financial management; fund management; management of funds; administration of funds; services in connection with asset management business; advisory services in connection with asset management services; discretionary management of funds; non-discretionary management of funds; custody services; trust and fiduciary services; investment services; capital investments; savings banks; business liquidations services (financial); mutual funds and fund investments; lending against security; trusteeships; mortgage banking; financial operations; monetary operations; financial sponsorship; financial transactions; management of permanent accounts; assets management; factoring; credit card services; issuance of credit cards; debit card services; issuing of travellers’ checks; surety services; bail-bonding; guarantees; hire-purchase financing; lease-purchase financing; safe deposit services; issue of tokens of value; exchanging money; instalment loans; loans (financing); pawnbrokerage; rent collection; electronic fund transfer; check [cheque] verification; credit bureaux; retirement payment services; debt collection agencies; deposits of valuables; insurance underwriting; accident insurance underwriting; fire insurance underwriting; actuarial services; health insurance underwriting; marine insurance underwriting; life assurance underwriting; brokerage; securities brokerage; brokerage of securities; stocks and bonds brokerage; collection of securities; clearing (financial); clearing-houses (financial); electronic payment; electronic payment via portable telephone; electronic transfer of securities, funds, capital, shares, currencies and any other financial assets; online payment on an electronic communications network; brokerage and transactions on an online electronic communications network; collection and disbursement of cheques and other payment orders; securities lending services; securities investment services; securities management; agencies or brokerage for trading of securities, securities index futures, securities options, and overseas market securities futures; agency services for securities; automated securities brokerage; computerized securities brokerage services; brokerage of shares or stocks and other securities; comparison of performance of portfolios of securities; management of portfolios of securities; financial information; economic, securities, stock exchange, stock/securities market, banking, monetary, investment and insurance information; online financial, economic, securities, stock exchange, stock/securities market, banking, monetary, investment and insurance information; interactive computer financial, economic, securities and banking information; financial analysis; economic, securities, banking, monetary, investment and insurance analysis; economic, securities, monetary and investment evaluation; financial evaluation (insurance, banking, real estate); financial, economic, securities, banking, monetary, investment and insurance research services; financial consultancy; financial advisory; economic, securities, banking, monetary, investment and insurance advisory and consultancy, including data consultancy via the Internet; stock exchange quotations; computerized financial economic analysis; real estate appraisal, receiving instructions relating to finance, banking, securities or insurance, including via the Internet; insurance brokerage, fiscal assessments, fiscal appraisals, real estate management, financial services provided via the Internet; appraisals; brokerage houses in the field of stocks, commodities, and futures; financial management of stocks; quotation of stock exchange prices; quotation of stock market prices; stock exchange quotation and listing services; electronic stock exchange services; trading in stocks; information, advisory and consultancy services in relation to all of the aforementioned services.

Class 38: Telecommunications, information agencies (news), in particular in the banking sector, communications by computer terminals, radio communications, telephone communications, television broadcasting, sending of telegrams, transmission of telegrams, broadcasting of television programmes, radio broadcasts, television broadcasting, telephone call centres, information relating to telecommunications, rental of telecommunications apparatus, rental of data transmission or message-sending apparatus, rental of telephones, electronic messaging, computer-aided transmission of data, messages and images, cellular telephone communication, transmission by satellite, telephone services, transmission of information, messages, images and sound via the Internet, intranet and extranet, transmission of interactive information by computer, transmission of information from a computer database, data transmission between networked computer systems, online transmission of information, transmission and reception of information, messages, images and sound via fixed telephones, mobile telephones, computers, or video systems, telecommunications by e-mail, telecommunications providing access to full banking, financing and insurance services, providing online access to a financial database, leasing access time to a computer database, leasing access time to a computer for data handling, transmission of information relating to medical treatment forms, communication by computer terminal providing access to a management system for medical treatment forms, transfer of data, in particular financing or accounting data by telecommunications, downloading of computer files and in particular of computer software.

Class 42: Computer security relating to means of payment, design and development of computers and software, technological services relating to computers and banking, computer analysis, industrial research in the field of computers and banking, software development (design), updating of computer software, maintenance of computer software, computer software configuration, rental of computer software, computer programming, development, installation, management, maintenance, servicing and updating of computer systems or Internet, intranet or extranet sites, development, installation, management, maintenance, servicing and updating of secure computer sites (websites), in particular in the financial, banking or insurance fields, hosting of computer sites (websites), design and development of electronic payment systems and security systems for financial transactions, in particular on the Internet or any other computer networks, analysis for computer system installation, reconstruction of databases, technical project studies, appraisals (surveying), rental of computers or of computer hardware, computer programming of management systems for medical treatment forms, technical assistance with the installation and operation of computer hardware, computer or electronic programming of surveillance systems or alarms.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; computer programs; software for processing electronic payments to and from others; authentication software; computer software supplied on the Internet; on-line electronic publications (downloadable from the Internet or a computer network or a computer database); downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet; Downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; Downloadable computer software for accessing, viewing, and controlling remote computers and computer networks; Downloadable electronic publications in the nature of articles and instructional materials in the fields of telecommunications, the Internet, training, business, sales, and marketing; computer software, computer peripherals; notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; personal media players; mobile telephones; smart phones; digital cameras; computer workstations; servers; computer and telecommunications networking hardware; computer network adaptors, switches, routers and hubs; wireless and wired modems and communication cards and devices; laptop holders, computer bags; fire-extinguishing apparatus; computer hardware and firmware; computer software (including software downloadable from the Internet); compact discs; digital music (downloadable from the Internet); telecommunications apparatus; mouse mats; mobile phone handsets; mobile phone accessories; downloadable games, pictures, motion pictures, movies and music; alarm systems; security cameras; mobile radio and television broadcasting units; television broadcasting equipment; cameras; video cameras; headphones; ear pieces; speakers; Global Positioning System (GPS) apparatus and equipment; computer, electronic and video games programmes and software (including software downloadable from the Internet); liquid crystal displays for telecommunications and electronic equipment; set top box; remote control; data storage programs; spectacles and sunglasses; signboards; encoded or magnetic bank credit, debit, cash and identification cards; automatic teller machines, cash dispensers; computer software applications, downloadable; electronic book readers; toner cartridges, unfilled, for printers and photocopiers; baby monitors; video baby monitors; lens hoods; tablet computers; encoded key cards; 3D spectacles; memory cards for video game machines; all included in class 9.

Class 16: Newspapers; magazines; periodicals; journals; paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; books, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels; carry bags of paper, cardboard and plastic; printed telephone, facsimile, electronic mail and web site directories; cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards; marketing and promotional materials; printed advertisements; user manuals; packaging materials; tissues; handkerchiefs made of paper; models and figurines made of paper; paper party bags; page holders; all included in class 16.

Class 35: Advertising; business management; business administration; office functions; organisation, operation and supervision of loyalty and incentive schemes; advertising services provided via the Internet; production of television and radio advertisements; accountancy; auctioneering; trade fairs; opinion polling; data processing; provision of business information; advertising agency services; advertising services provided for others; database management; compilation of information into computer databases; business consulting services; business consulting services in the field of web based events, conferences, training programs, learning programs, and seminars; business consulting services in the field of delivering web-based knowledge; business consulting services in the field of online collaboration and collaboration technologies; business consulting services in the fields of sales and marketing; business project management services; business project management services relating to development, set up, staging, production, recording, monitoring and follow-up for web based events, conferences, training programs, learning programs, and seminars; market research and business consulting services; business consultancy services relating to facilitating the transaction of business via local and global computer networks by locating and providing referrals for the delivery of a wide variety of business and consumer products and services; dissemination of business information of goods and services of others via local and global computer networks; business consultancy services relating to providing a web site on a global computer network by which third parties can offer and source goods and services, place, determine the status of and fulfill trade leads and orders, enter into contracts and transact business; providing computerized online ordering services for scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, computer programs, software for processing electronic payments to and from others, authentication software, computer software supplied on the Internet, on-line electronic publications (downloadable from the Internet or a computer network or a computer database), downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet, Downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser, Downloadable computer software for accessing, viewing, and controlling remote computers and computer networks, Downloadable electronic publications in the nature of articles and instructional materials in the fields of telecommunications, the Internet, training, business, sales, and marketing, computer software, computer peripherals, notebook computers, laptop computers, portable computers, handheld computers, personal digital assistants, personal media players, mobile telephones, smart phones, digital cameras, computer workstations, servers, computer and telecommunications networking hardware, computer network adaptors, switches, routers and hubs, wireless and wired modems and communication cards and devices, laptop holders, computer bags, fire-extinguishing apparatus, computer hardware and firmware, computer software (including software downloadable from the Internet), compact discs, digital music (downloadable from the Internet), telecommunications apparatus, mouse mats, mobile phone handsets, mobile phone accessories, downloadable games, pictures, motion pictures, movies and music, alarm systems, security cameras, mobile radio and television broadcasting units, television broadcasting equipment, cameras, video cameras, headphones, ear pieces, speakers, Global Positioning System (GPS) apparatus and equipment, computer, electronic and video games programmes and software (including software downloadable from the Internet), liquid crystal displays for telecommunications and electronic equipment, set top box, remote control, data storage programs, spectacles and sunglasses, signboards, encoded or magnetic bank credit, debit, cash and identification cards, automatic teller machines, cash dispensers, computer software applications, downloadable, electronic book readers, toner cartridges, unfilled, for printers and photocopiers, baby monitors, video baby monitors, lens hoods, tablet computers, encoded key cards, 3D spectacles, memory cards for video game machines, Newspapers, magazines, periodicals, journals, paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging (not included in other classes), printers’ type, printing blocks, books, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels, carry bags of paper, cardboard and plastic, printed telephone, facsimile, electronic mail and web site directories, cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards, marketing and promotional materials, printed advertisements, user manuals, packaging materials, tissues, handkerchiefs made of paper, models and figurines made of paper, paper party bags, page holders; advertising of goods and services of others via local and global computer networks; international import and export agency services; rental of advertising space on communication media; online trading services relating to electronic auctioneering and providing online business evaluation relating thereto; providing a directory of third party web sites to facilitate business transactions; business consultancy services relating to operating an electronic marketplace for the buyers and sellers of goods and/or services on a global computer network; business assistance relating to facilitating business transaction via local and global computer networks; corporate management consultancy services; marketing and promotion services; publication of publicity materials; marketing of vacant premises; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; computer data processing; sales, business, promotional information services; telephone answering (for unavailable subscribers); telephone answering (for others); auctioneering provided on the Internet; personnel management; provision of sales, business, advertising and promotional information through a global computer network and via the Internet; presentation of goods on communication media for retail purposes; retail and wholesale of telephones, mobile phone handsets, mobile phone accessories, electronic and telecommunications goods, computer hardware and computer software, batteries, battery chargers, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound, precious metals, jewellery, precious stones, printed matter, stationery and magnetic and non magnetically encoded cards, furniture, picture frames, household and kitchen utensils, glassware, porcelain and earthenware, textiles, clothing, footwear, headgear, laces and embroidery, buttons, ribbons, pins and needles, artificial flowers, carpets, rugs, games and electronic toys, chemicals used in industry, science, photography and agriculture, paints, varnishes and lacquers, personal hygiene products, soaps, perfumery, cosmetics, hair and body lotions, essential oils, cleaning and bleaching preparations, lubricants, fuels, candles, pharmaceutical, veterinary and sanitary preparations, ironmongery and small items of metal hardware, machine tools, cutlery, razors and hand tools, computers, calculating machines, electrical, photographic, cinematographic and optical apparatus and instruments, spectacles and sun glasses, surgical and medical apparatus and instruments, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, firearms, fireworks, silverware, horological and chronometric instruments, musical instruments, magazine, cards, picture; typewriters and office requisites, packaging materials, rubber and plastics for manufacture use, packing and insulating materials, leather and imitations of leather, handbags, purses, wallets, leather holders, bags, luggage, umbrellas, mirrors, ropes, string, nets, tents, yarns and threads for textile use, coat hangers, place mats, dressmaker’s articles, bed and table covers, playthings and sporting articles, foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non-alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers’ articles and matches; direct mail advertising; buying and selling agency services; selection of goods and procurement of goods for individuals and businesses; ordering services [for others]; secretarial services; provision of business statistical information; organisation of exhibitions for commercial or advertising purposes; business assistance services relating to compilation and rental of mailing lists; business investigation; business administration services for the processing of sales made on the Internet; business referral services and personnel placement; import-export clearance agencies (import-export agency services); agency for newspapers subscriptions; document reproduction; transcription (including stencil-paper writing); rental of office equipment; customer relationship management; business management services relating to electronic commerce; business management and administration services relating to sponsorship programmes; accounting services; charitable services, namely providing administrative services for the organizing and conducting volunteer programmes and community service projects; rental of sales stands; provision of commercial and business contact information; search engine optimization; web site traffic optimization; pay per click advertising; commercial intermediation services; business management for freelance service providers; negotiation and conclusion of commercial transactions for third parties; updating and maintenance of data in computer databases; business project management services for construction projects; providing business information via a web site; consultancy, information and advisory services relating to the aforesaid services; all included in class 35.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; clearing and reconciling financial transactions via a global computer network; online banking services and financial services; credit card services, processing and transmission of bills and payments thereof, and providing insurance for financial transactions; funds transfer services; transmission of funds by electronic means for others; transfer of payments for others via the internet; financial services in the nature of billing and payment processing services; arrangement and management of leases and tenancy; renting and leasing of real estate; real estate appraisal; real estate valuation, real estate financing, real estate investment; real estate brokerage services; real estate agency services; housing agency services; actuarial services; real estate management and consultancy services; rent collection; rental of offices (real estate); rental of apartments and flats; provision of financial information via the Internet; safety deposit and issuing of travel vouchers services; capital investments; financial evaluation [insurance, banking, real estate]; financial and asset management services; insurance and financial services; financial services provided by telecommunication means; financial consultancy and advisory services; online banking; banking services provided on-line from a computer databases or the Internet; securities brokerage services, stock exchange quotation services; stocks and bonds brokerage, financial analysis; debit card services, charge card services and cheque guarantee services; banking, savings account and investment services; financial clearing services; credit verification via global computer information network; electronic credit risk management services; electronic purchase payment and electronic bill payment services; financial accounts debiting and crediting services; electronic banking services; issuance of stored value cards, charge cards and debit cards; telephone credit cards services; information services relating to finance and insurance, provided online from a computer database or Internet; agency for collection of gas and electricity fees; antique appraisal; art appraisal; jewelry appraisal; used car appraisal; tax information supply; charitable fund raising; organizing of charitable collections; charitable collections; rental of paper money and coin counting or processing machines; rental of cash dispensers or automated-teller machines; online payment services; arranging finance for construction projects; consultancy, information and advisory services relating to the aforesaid services; import-export clearance agencies (custom clearance); all included in class 36.

Class 38: Telecommunications services; providing web-based multimedia teleconferencing, videoconferencing, and online meeting services that allow simultaneous and asynchronous viewing, sharing, editing, and discussion of documents, data, and images by participants via a web browser; providing customers with online access to online reports regarding the performance, effectiveness, and status of web-based applications, teleconferences, videoconferences, and meetings; providing users with secure remote access via the Internet to private computer networks; providing online collaboration services allowing users to access applications, platforms, jointly-shared documents, data, task lists, and discussion forums; Internet broadcasting services, providing an online database of information regarding web-based broadcasting complaint submission platform; provision of telecommunication access and links to computer database and to the Internet; electronic communication services; interactive telecommunications services; telecommunication of information (web pages), computer programs and data; providing telecommunications connections to the Internet or data bases; provision of telecommunication access to world-wide web facilities and structures; communication by computer terminals; communication by fibre optic networks; computer aided transmission of messages and images; facsimile transmission; message sending; paging services; rental of modems; data communication services by electronic means; rental of telecommunication equipment; electronic message sending, receiving and forwarding services; collection, transmission and delivery of data by electronic means; collection, transmission and delivery of mail messages, still picture and/or moving picture information such as characters, messages, music and images, telegrams, information and data by mechanical, electronic, telephone, telex, cable, computer and satellite means; transmission, broadcast and reception of audio, video, still and moving images and data whether in compressed or uncompressed form and whether in real or delayed time; electronic messaging, conferencing and order-transmission services; video conferencing services; communication by electronic bulletin board that enables users to perform a real-time interactive talk between a computer terminal and an electronic bulletin board containing still picture and moving picture information and voice information such as characters; providing electronic bulletin boards and message boards for transmission of messages; provision of online discussion forums; television broadcasting services; broadcasting and transmission of radio and television programmes; music broadcasting; transmission of music, films, interactive programmes, videos, electronic computer games; transmission of information relating to on-line shopping and general retail services; video-on-demand transmission services; news agency services; providing access to computer database on the global computer network for searching and retrieving information, data, web sites and resources available on computer networks; providing user access to a computer database containing electronic publications, bulletin boards, database and information accessible via computer; operation of chat rooms (chat room services); multiple user access to global computer information networks for the transfer and dissemination of a wide range of information; providing access to a website on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to an interactive website on a global computer network for third parties to post information, respond to requests and place and fulfill orders for products, services and business opportunities; communication services, namely, text and numeric digital messaging services; transmission of information by data communications for assisting decision making; transmission of information through video communication systems; web conferencing services; electronic communication services for establishing virtual chatrooms via text messaging; providing electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business leads and opportunities; providing an online interactive bulletin board for the posting, promotion, sale and resale of items via a global computer network; providing electronic mail and electronic mail forwarding services; audio and video communication via computers and computer networks, and via a global communications network; providing computer access and leasing access time to online interactive bulletin boards and databases; providing access to electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business opportunities; providing access to electronic calendar, address book and electronic notebook, via local and global computer networks; providing distant video and/or telephone conferencing access and facilities; providing computer links to third party web sites to facilitate e-commerce and real world business transactions; consultancy, information and advisory services relating to the aforesaid services; all included in class 38.

Class 42: Scientific and technological services and research and design relating thereto, industrial analysis and research services; design and development of computer hardware and software; computer services in connection with transmitting information, data, documents, and images over the Internet; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) services providing software in the fields of web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; providing online non-downloadable software for facilitating the interoperability of multiple software applications; technical support services relating to computer software and applications provided online, by email and by telephone; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, engage in social networking, and exchange documents; computer technology advice provided to Internet users by means of a support hotline; computer service relating to creating indexes of information, sites and resources on computer networks; providing search engines; design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players; design of mobile telephones and smart phones; design of digital cameras; computer services; computer programming; computer integration services; computer analysis services; computer programming in relation to the defence against virus; computer system software services; providing direct connection services between computer users for exchanging data; computer software design; computer system design; design and development of webpages; hosting webpages for others; hosting computer application software for searching and retrieving information from databases and computer networks; providing technical information at the specific request of end-users by means of telephone or global computer network; consultancy services in relation to computer software; computer services relating to customized searching of computer databases and websites; computer and electronic signal coding and decoding; conversion of physical data and documents into electronic media format; testing and evaluation services; architectural and design services; interior designs of buildings, offices and apartments; computer and network information services; provision of computer security risk management programs; computer security information, knowledge, and testing services; quality assurance services; computer services relating to certification of business transactions and preparation of reports therefore; access control to (security services for-) computers, electronic networks and databases; security of data transmission and of transactions via computer networks; consultancy in the field of data security; technological consultancy concerning securing telecommunications; computerized communication network security services; providing information in the fields of Internet, world wide web and computerized communication network security and the secure transmission of data and information; consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services, secure data and information transmission services; authentication services for computer security; on-line authentication of electronic signatures; off-site data backup; electronic data storage; providing information on computer technology and programming via a web site; cartography services; cloud computing; consultancy, information and advisory services relating to the aforesaid services; all included in class 42.

Earlier Community trade mark registration No 9 903 576 is registered for the entire class headings of Classes 36 and 38 of the Nice Classification. It was filed on 18/04/2011. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards Community trade marks filed before 21/06/2012, the Office considers that the applicant’s intention was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9th edition.

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 terms ‘in particular’, ‘such as’ and ‘including’, used in both lists of goods and services, indicate that the specific goods and services listed thereafter are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

However, the term ‘namely’, used in both lists 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 scientific, signalling, checking (supervision) apparatus and instruments are identically included in the opponent’s list of goods in Class 9.

The contested weighing apparatus and instruments are identical to the opponent’s scientific, apparatus and instruments, because the opponent’s goods are included in or overlap with the contested goods, or vice versa.

The contested nautical apparatus and instruments overlap with the opponent’s signalling apparatus and instruments, also in Class 9. They are considered identical.

The contested surveying apparatus and instruments include, as a broad category, the opponent’s surveillance system detectors, surveillance system keypads, surveillance system controls and remote controls, surveillance cameras. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested photographic, cinematographic, optical apparatus and instruments are identical to the opponent’s apparatus for recording images in Class 9, because the opponent’s goods are included in or overlap with the contested goods, or vice versa.

The contested measuring apparatus and instruments are identical to the opponent’s checking (supervision) apparatus and instruments in Class 9, because the opponent’s goods are included in or overlap with the contested goods, or vice versa.

The contested teaching apparatus and instruments are identical to the opponent’s apparatus for recording images, either because they are identically included in both lists (including synonyms) or because the opponent’s goods are included in or overlap with the contested goods, or vice versa.

The contested apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; cash registers, calculating machines; computer peripherals; remote control; automatic teller machines are identically included in the opponent’s list of goods in Class 9.

The contested recording discs are identical to the opponent’s compact discs (audio-video), because the opponent’s goods are included in or overlap with the contested goods, or vice versa.

The contested mechanisms for coin-operated apparatus include, as a broad category, the opponent’s coin-operated mechanisms for television sets in Class 9. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested computers are also included in the opponent’s list of goods in Class 9.

The contested data processing equipment is identical to the opponent’s data processing apparatus. They are synonyms for the same goods.

The contested computer programs are identical to the opponent’s recorded computer programs in Class 9, because the opponent’s goods are included in or overlap with the contested goods, or vice versa.

The contested software for processing electronic payments to and from others is included in the category of the opponent’s computer software enabling full banking, financing and insurance services to be provided, in particular to be provided remotely. These goods are identical.

The contested authentication software overlaps with the opponent’s computer software enabling full banking, financing and insurance services to be provided, in particular to be provided remotely, since the opponent’s goods include authentication software, which provides secure access to banking, financial and insurance services. These goods are identical.

The contested computer software supplied on the Internet; computer software include, as broader categories, the opponent’s software enabling full banking, financing and insurance services to be provided, in particular to be provided remotely. It is impossible for the Opposition Division to filter these goods from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested on-line electronic publications (downloadable from the Internet or a computer network or a computer database) are identical to the opponent’s electronic publications being downloadable, since they are synonymous.

The contested downloadable electronic publications in the nature of articles and instructional materials in the fields of telecommunications, the Internet, training, business, sales, and marketing are included in the broad category of the opponent’s electronic publications being downloadable and are therefore identical.

The contested notebook computers; laptop computers; portable computers; handheld computers; personal digital assistants; electronic book readers; tablet computers are included in the broad category of the opponent’s computers, and these goods are therefore identical.

The contested personal media players are included in the broad category of the opponent’s apparatus for reproduction of sound, and these goods are therefore identical.

The contested mobile telephones; smart phones are included in the broad category of the opponent’s telephone apparatus. These goods are therefore identical.

The contested digital cameras; cameras; video cameras; security cameras are included in the broad category of the opponent’s apparatus for recording or reproduction of data, sound or images. These goods are therefore identical.

The contested computer workstations; servers are identical to the opponent’s central processing units (processors), because the opponent’s goods are included in or overlap with the contested goods, or vice versa.

The contested computer and telecommunications networking hardware; computer network adaptors, switches, routers and hubs; communication cards and devices consist of different kinds of hardware frequently used as peripheral devices for computers. Therefore, they are included in the opponent’s broad category of computer peripherals. These goods are identical.

The contested wireless and wired modems are included in the opponent’s broad category of modems. These goods are identical.

The contested alarm systems include, as a broader category, the opponent’s smoke alarms. It is impossible for the Opposition Division to filter these goods from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested computer hardware and firmware; computer software (including software downloadable from the Internet); computer software applications, downloadable include, as broad categories, the opponent’s computer hardware and software enabling full banking, financing and insurance services to be provided, in particular to be provided remotely. It is impossible for the Opposition Division to filter these goods from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s goods, they are considered identical to the opponent’s goods.

Despite the slight difference in wording, the contested compact discs are identical to the opponent’s compact discs (audio-video).

The contested telecommunications apparatus include, as a broad category, the opponent’s transmitters (telecommunications) in Class 9. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested mobile radio and television broadcasting units; television broadcasting equipment; baby monitors; video baby monitors are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images in Class 9. These goods are identical.

The contested headphones; ear pieces; speakers are included in the broad category of the opponent’s apparatus for reproduction of sound. These goods are identical.

The contested Global Positioning System (GPS) apparatus and equipment are identical to the opponent’s data processing apparatus, because the opponent’s goods are included in or overlap with the contested goods, or vice versa.

The contested computer, electronic programmes and software (including software downloadable from the Internet) include, as a broad category, the opponent’s specific software, software enabling full banking, financing and insurance services to be provided, in particular to be provided remotely. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested liquid crystal displays for telecommunications and electronic equipment are included in the broad category of the opponent’s apparatus for reproduction of images. These goods are identical.

The contested set top box is a device which converts external signals into content that can be displayed on a screen (e.g. television screen or other display device). It is included in the opponent’s category of data processing apparatus. These goods are identical.

The contested signboards are included in the opponent’s category of signalling apparatus and instruments. These goods are identical.

The contested encoded or magnetic bank credit, debit, cash and identification cards; encoded key cards are, despite the difference in wording, identical to the opponent’s identification cards, being magnetic or having a microprocessor, payment, credit or debit cards, being either magnetic or having a microprocessor, bank cards, electronic payment cards, smartcards or cards with microprocessors in Class 9.

The contested cash dispensers are identical to the opponent’s automatic teller machines, since both specifications are synonymous.

The contested memory cards for video game machines consist of data devices which store information about video games. Therefore, they are included in the broad category of the opponent’s magnetic data carriers. These goods are identical.

The contested fire-extinguishing apparatus are similar to the opponent’s smoke alarms. These goods are frequently sold together. They are complementary, have the same distribution channels and points of sale, target the same consumers and are likely to come from the same kinds of undertakings.

The contested life-saving apparatus and instruments are similar to the opponent’s signalling apparatus and instruments. These goods have the same purpose, and can have the same producers and distribution channels.

The contested apparatus and instruments for conducting, accumulating electricity are similar to the opponent’s apparatus for recording of sound, as they can have the same end users and distribution channels. Furthermore, they are complementary.

The contested downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet; downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser; downloadable computer software for accessing, viewing, and controlling remote computers and computer networks consist of a specific kind of software. These goods are similar to the opponent’s software enabling full banking, financing and insurance services to be provided, in particular to be provided remotely, namely computer apparatus and devices, recorded computer programs, software (recorded programs), accounts management software, secure payment software for online electronic communications networks, electronic payment transaction software, since these are also a specific kind of software, albeit for different functions. These goods have the same nature, purpose and method of use, and can have the same distribution channels. They can be complementary and are likely to come from the same kinds of companies.

The contested digital music (downloadable from the Internet); downloadable games, pictures, motion pictures, movies and music are similar to the opponent’s electronic publications being downloadable, as they have the same purpose and nature. They can have the same producers, end users and distribution channels.

The contested video games programmes and software are similar to the opponent’s computers. Despite their different natures, they are complementary, since video games programmes and software are dependent on hardware (e.g. a computer). In addition, these goods have the same distribution channels and points of sale, and are likely to come from the same kinds of companies.

The contested data storage programs are similar to the opponent’s apparatus for recording, transmission or reproduction of data. Although they have different natures, they are complementary, target the same relevant public and are likely to come from the same kinds of undertakings.

The contested apparatus and instruments for switching, transforming, regulating or controlling electricity are similar to a low degree to the opponent’s checking (supervision) apparatus and instruments, as they can have the same producers, end users and distribution channels.

The contested laptop holders, computer bags; mouse mats are similar to a low degree to the opponent’s computers, since they can have the same end users and distribution channels. Furthermore, they are complementary.

The contested mobile phone handsets; mobile phone accessories are similar to a low degree to the opponent’s portable telephones, since they can have the same end users and distribution channels. Furthermore, they are complementary.

The contested spectacles and sunglasses; toner cartridges, unfilled, for printers and photocopiers; lens hoods; 3D spectacles are dissimilar to all the opponent’s goods and services in all classes, since they differ in nature, purpose and method of use, and do not have the same distribution channels or points of sale. They target different consumers and are not likely to come from the same kinds of undertakings. Finally, they are neither complementary nor in competition.

Contested goods in Class 16

The contested newspapers; periodicals; printed matter; stationery; office requisites (except furniture); instructional and teaching material (except apparatus); circulars, catalogues, calendars are identically included in the opponent’s list of goods in Class 16.

The contested magazines; journals; books, printed cards; printed telephone, facsimile, electronic mail and web site directories; printed advertisements; user manuals consist of images and/or text printed on paper. They are included in the broad category of the opponent’s printed matter in Class 16. These goods are identical.

The contested paper, cardboard; adhesives for stationery are included in the broad category of the opponent’s stationery in Class 16. These goods are therefore identical.

The contested typewriters are included in the opponent’s broad category of office requisites (except furniture). These goods are therefore identical.

The contested cards in the form of debit cards, credit cards are included in the opponent’s category of non-magnetic payment cards. These goods are therefore identical.

The contested charge cards and telephone cards other than encoded and magnetic cards are included in the opponent’s category of cards. These goods are therefore identical.

The contested photographs; pamphlets, posters; marketing and promotional materials are included in the broad category of the opponent’s printed matter in Class 16. These goods are identical.

The contested adhesives for household purposes are highly similar to the opponent’s stationery in Class 16, as they can have the same purpose and nature. In addition, they can have the same producers and end users.

The contested page holders are highly similar to the opponent’s bookmarks. The contested page holders are used to keep a book open, and can be made of different materials and have different shapes and sizes. The opponent’s bookmarks consist of a thin marker, commonly made of card or fabric, which retains the reader’s place in a book. These goods have the same nature, method of use, distribution channels and points of sale, target the same consumers and are likely to come from the same kind of undertakings.

The contested bookbinding material is similar to the opponent’s stationery in Class 16, since these goods can have the same purpose, have the same distribution channels and points of sale, and are likely to come from the same kind of companies.

The contested price tags, price labels are similar to the opponent’s tickets. These goods have the same nature, distribution channels and points of sale, target the same consumers and are likely to come from the same kind of undertakings.

The contested artists’ materials are similar to a low degree to the opponent’s stationery, as they have the same purpose, and they can have the same producers and distribution channels.

The contested paint brushes are objects made of short stiff hairs or wires set in a block of wood or plastic usually attached to a handle, which are used for many different jobs. They are similar to a low degree to the opponent’s stationery, as these goods normally have the same distribution channels and commercial origin and they target the same public.

The contested plastic materials for packaging (not included in other classes); paper party bags are similar to a low degree to the opponent’s stationery in Class 16, as they can have the same end users and distribution channels.

The contested carry bags of paper, cardboard and plastic; packaging materials are similar to a low degree to the opponent’s stationery, as these goods are sometimes used in a complementary way, have the same distribution channels and points of sale and can target the same consumers.

The contested printers’ type; tissues; handkerchiefs made of paper; models and figurines made of paper are dissimilar to all the goods and services on which the opposition is based, since they differ in nature, purpose and method of use, and do not have the same distribution channels or points of sale. They target different consumers and are not likely to come from the same kinds of undertakings. Finally, they are neither complementary nor in competition.

Contested services in Class 35

The contested business management; business administration; accountancy; provision of business information; data processing; market research; accounting services; business investigation are identically included in the opponent’s list of services in Class 35 (the contested accounting services are in the opponent’s list as accountancy services).

The contested advertising; advertising services provided via the Internet; production of television and radio advertisements; advertising agency services; advertising services provided for others are identical to the opponent’s advertising services for promoting the brokerage of stocks and other securities as well as banking, financial, fiduciary and investment services in Class 35, because the opponent’s services are included in or overlap with the contested services, or vice versa.

The contested opinion polling services are identical to the opponent’s business management in Class 35, because the opponent’s services are included in or overlap with the contested services, or vice versa.

The contested database management; compilation of information into computer databases overlap with the opponent’s compilation of business information. These services are therefore identical.

The contested trade fairs are included in the broader category of the opponent’s business administration. These services are identical.

The contested business consulting services; business consulting services in the field of web based events, conferences, training programs, learning programs, and seminars; business consulting services in the field of delivering web-based knowledge; business consulting services in the field of online collaboration and collaboration technologies; business consulting services in the fields of sales and marketing are included in the broad category of the opponent’s consultancy with regard to business planning, business analysis, business management, and business organization. These services are therefore identical.

The opponent’s business management services are usually rendered by companies specialised in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business, or they provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in managing a business, such as how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, carry out marketing, research consumer trends, launch new products and create a corporate identity, etc. Therefore, the following contested services are either identical to the opponent’s business management services (i.e. because they are included in the opponent’s category or because they overlap) or at least similar, as they have the same distribution channels, target the same consumers and are likely to come from the same kind of undertakings:

Business project management services; business project management services relating to development, set up, staging, production, recording, monitoring and follow-up for web based events, conferences, training programs, learning programs, and seminars.

The contested business consultancy services relating to facilitating the transaction of business via local and global computer networks by locating and providing referrals for the delivery of a wide variety of business and consumer products and services; business consultancy services relating to providing a web site on a global computer network by which third parties can offer and source goods and services, place, determine the status of and fulfil trade leads and orders, enter into contracts and transact business consist of business consultancy services, both in general and in relation to particular fields. These are included in the opponent’s broad category of consultancy services in relation to all of the aforementioned services, since the ‘aforementioned services’ include business management; business administration. These services are therefore identical.

The contested dissemination of business information of goods and services of others via local and global computer networks are included in the broad category of the opponent’s business information services provided on-line from a computer database or the internet. These services are therefore identical.

The contested advertising of goods and services of others via local and global computer networks; rental of advertising space on communication media; dissemination of advertising materials, updating of advertising materials, compilation of advertisements for use as web pages on the Internet; rental of advertising space; marketing and promotion services; publication of publicity materials; presentation of goods on communication media for retail purposes; marketing of vacant premises; direct mail advertising; rental of sales stands; pay per click advertising consist of different kinds of advertising services. They are identical to the opponent’s advertising services for promoting the brokerage of stocks and other securities as well as banking, financial, fiduciary and investment services, because the opponent’s services are included in or overlap with the contested services, or vice versa.

The contested providing a directory of third party web sites to facilitate business transactions consists of the provision of specific information (i.e. a directory of third party web sites). It is therefore included in the broad category of the opponent’s provision of business information. These services are identical.

The contested business consultancy services relating to operating an electronic marketplace for the buyers and sellers of goods and/or services on a global computer network; business assistance relating to facilitating business transaction via local and global computer networks; corporate management consultancy services are included in the opponent’s assistance, advisory services and consultancy with regard to business planning, business analysis, business management, and business organization. These services are identical.

The contested sales, business, promotional information services; provision of sales, business, advertising and promotional information through a global computer network and via the Internet; providing business information via a web site are included in the broad category of the opponent’s provision of business information. These services are identical.

The contested computer data processing is included in the opponent’s data processing. These services are identical.

The contested personnel management services are part of the day-to-day activities included in business administration, which consists of organising people and resources efficiently so as to direct activities towards common goals and objectives. Therefore, these services are identical to the opponent’s business administration.

The contested buying and selling agency services; selection of goods and procurement of goods for individuals and businesses; ordering services [for others]; organisation of exhibitions for commercial or advertising purposes; business administration services for the processing of sales made on the Internet; business referral services and personnel placement; import-export clearance agencies (import-export agency services); business administration services relating to sponsorship programmes; charitable services, namely providing administrative services for the organizing and conducting volunteer programmes and community service projects are included in the opponent’s broad category of business administration in Class 35. Therefore, they are identical.

The contested customer relationship management; business management services relating to electronic commerce; business management services relating to sponsorship programmes; business management for freelance service providers; commercial intermediation services; negotiation and conclusion of commercial transactions for third parties; business project management services for construction projects are included in the broader category of the opponent’s business management. Therefore, they are identical.

The contested provision of business statistical information; provision of commercial and business contact information are included in the broad category of the opponent’s provision of business information. These services are therefore identical.

The contested office functions are similar to the opponent’s business administration, as they have the same purpose. They can have the same providers and end users.

The contested providing computerized online ordering services for scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, computer programs, software for processing electronic payments to and from others, authentication software, computer software supplied on the Internet, on-line electronic publications (downloadable from the Internet or a computer network or a computer database), downloadable computer software to facilitate the electronic transmission of information, data, documents, voice, and images over the Internet, downloadable computer software which allows users to participate in web-based meetings and classes, with access to data, documents, images and software applications through a web browser, downloadable computer software for accessing, viewing, and controlling remote computers and computer networks, downloadable electronic publications in the nature of articles and instructional materials in the fields of telecommunications, the Internet, training, business, sales, and marketing, computer software, computer peripherals, notebook computers, laptop computers, portable computers, handheld computers, personal digital assistants, personal media players, mobile telephones, smart phones, digital cameras, computer workstations, servers, computer and telecommunications networking hardware, computer network adaptors, switches, routers and hubs, wireless and wired modems and communication cards and devices, laptop holders, computer bags, fire-extinguishing apparatus, computer hardware and firmware, computer software (including software downloadable from the Internet), compact discs, digital music (downloadable from the Internet), telecommunications apparatus, mouse mats, mobile phone handsets, mobile phone accessories, downloadable games, pictures, motion pictures, movies and music, alarm systems, security cameras, mobile radio and television broadcasting units, television broadcasting equipment, cameras, video cameras, headphones, ear pieces, speakers, Global Positioning System (GPS) apparatus and equipment, computer, electronic and video games programmes and software (including software downloadable from the Internet), liquid crystal displays for telecommunications and electronic equipment, set top box, remote control, data storage programs, spectacles and sunglasses, signboards, encoded or magnetic bank credit, debit, cash and identification cards, automatic teller machines, cash dispensers, computer software applications, downloadable, electronic book readers, toner cartridges, unfilled, for printers and photocopiers, baby monitors, video baby monitors, lens hoods, tablet computers, encoded key cards, 3D spectacles, memory cards for video game machines, newspapers, magazines, periodicals, journals, paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging (not included in other classes), printers’ type, printing blocks, books, pamphlets, posters, printed cards, circulars, catalogues, calendars, price tags, price labels, carry bags of paper, cardboard and plastic, printed telephone, facsimile, electronic mail and web site directories, cards in the form of debit cards, credit cards, charge cards and telephone cards other than encoded and magnetic cards, marketing and promotional materials, printed advertisements, user manuals, packaging materials, tissues, handkerchiefs made of paper, models and figurines made of paper, paper party bags, page holders consists of providing computerised online ordering services for different kinds of goods. These contested services are similar to the opponent’s compilation of business information; business information services provided on-line from a computer database or the internet; business inquiries; business investigation and research in Class 35. These services have the same nature, all being office functions and support services provided in a ‘back office’. They are offered by the same companies and target the same public. Moreover, they can have the same distribution channels.

The contested international import and export agency services are similar to the opponent’s business management, as they can have the same end users and distribution channels. Furthermore, they are in competition.

The contested telephone answering (for unavailable subscribers); telephone answering (for others); secretarial services; business assistance services relating to compilation and rental of mailing lists; agency for newspapers subscriptions; document reproduction; transcription (including stencil-paper writing); rental of office equipment; updating and maintenance of data in computer databases are similar to the opponent’s business administration, since they are all activities aimed at performing day-to-day operations required by a business to achieve its commercial purpose and function smoothly. They mainly cover activities that assist in the running of a commercial enterprise. Therefore, these services have the same purpose, can target the same consumers and are likely to come from the same kinds of companies.

The contested organisation, operation and supervision of loyalty and incentive schemes are at least similar to a low degree to the opponent’s business administration, since they have the same distribution channels and are likely to come from the same kinds of undertakings and target the same consumers.

The contested search engine optimization; web site traffic optimization are services frequently purchased by professionals in order to maximise their communication with potential clients or come up as hits in internet searches carried out by potential clients. These services are also purchased to improve the results from searches carried out online. Therefore, these contested services are at least similar to a low degree to the opponent’s business administration, since they have the same nature, can have the same purpose and can target the same consumers.

The contested services include retail and wholesale services for various goods. Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as 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 services are similar to a low degree to the opponent’s goods, if there is identity between the goods to which the retail services relate and the goods of the opponent for any reason (i.e. either because they are identically listed, are synonyms referring to the same goods, overlap or because one is comprised in a category of the other’s goods).

The following retail and wholesale services are similar to a low degree to the opponent’s goods in Classes 9 and 16:

The contested retail and wholesale of electronic and telecommunications goods, computer hardware and computer software, telephones, apparatus and instruments for recording, receiving, transmitting and/or reproducing data, information, pictures, images and/or sound, printed matter, stationery and magnetic and non magnetically encoded cards, computers, calculating machines, electrical, photographic, cinematographic and optical apparatus and instruments, magazine, cards, typewriters and office requisites.

According to the same reasoning, the contested services of retail and wholesale of goods in relation to which no identity with the goods of the opponent has been found are considered dissimilar to the goods and services of the opponent. These are the following:

The contested retail and wholesale of mobile phone handsets, mobile phone accessories, batteries, battery chargers, precious metals, jewellery, precious stones, furniture, picture frames, household and kitchen utensils, glassware, porcelain and earthenware, textiles, clothing, footwear, headgear, laces and embroidery, buttons, ribbons, pins and needles, artificial flowers, carpets, rugs, games and electronic toys, chemicals used in industry, science, photography and agriculture, paints, varnishes and lacquers, personal hygiene products, soaps, perfumery, cosmetics, hair and body lotions, essential oils, cleaning and bleaching preparations, lubricants, fuels, candles, pharmaceutical, veterinary and sanitary preparations, ironmongery and small items of metal hardware, machine tools, cutlery, razors and hand tools, spectacles and sun glasses, surgical and medical apparatus and instruments, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, vehicles, firearms, fireworks, silverware, horological and chronometric instruments, musical instruments, picture; packaging materials, rubber and plastics for manufacture use, packing and insulating materials, leather and imitations of leather, handbags, purses, wallets, leather holders, bags, luggage, umbrellas, mirrors, ropes, string, nets, tents, yarns and threads for textile use, coat hangers, place mats, dressmaker’s articles, bed and table covers, playthings and sporting articles, foodstuffs and beverages, meat, fish, poultry, preserved, dried and cooked fruits and vegetables, jams and fruits sauces, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa, sugar, rice, flour, bread and cakes, condiments, fresh fruit and vegetables, beer, mineral water, fruit juices and other non-alcoholic drinks, alcoholic beverages, floral products, tobacco, smokers’ articles and matches; consultancy, information and advisory services relating to the aforesaid services.

Auctioneering can be defined as a public sale of goods and property, especially one in which prospective purchasers bid against each other until the highest price is reached. The contested auctioneering; online trading services relating to electronic auctioneering and providing online business evaluation relating thereto; auctioneering provided on the Internet; consultancy, information and advisory services relating to the aforesaid services are dissimilar to all the goods and services on which the opposition is based, since they differ in nature, purpose and method of use, and do not have the same distribution channels or points of sale. They target different consumers and are not likely to come from the same kinds of undertakings. Finally, they are neither complementary nor in competition.

The contested consultancy, information and advisory services relating to the aforesaid services refer to all the applicant’s services in Class 35. These kinds of services are frequently offered in order to resolve consumers’ with doubts or problems before purchasing, or while using, those services. The companies offering the contested services of consultancy, information and advice are the same companies that provide the remainder of the contested services in Class 35, in relation to which these doubts or problems occur.

Therefore, these contested services, as far as they are offered in relation to services similar or identical to the opponent’s services, are similar to them. They have the same nature, target the same consumers and come from the same kinds of undertakings.

Contested services in Class 36

Since the earlier mark is registered for the entire alphabetical list of Class 36 (under the 9^th Edition of the Nice Classification), as explained above, it is deemed to cover the services of the contested Class 36 (under the 10^th Edition of the Nice Classification), with the only exception of those contested services that were added to this Class in the 10^th Edition, which were not contained in Class 36 in the 9^th Edition. However, the list of contested services does not contain any of those additional services. As a consequence, all the contested services in Class 36 are covered by, and are therefore identical to, the opponent´s Class 36. Those contested services are the following:

Insurance; financial affairs; monetary affairs; real estate affairs; clearing and reconciling financial transactions via a global computer network; online banking services and financial services; credit card services, processing and transmission of bills and payments thereof, and providing insurance for financial transactions; funds transfer services; transmission of funds by electronic means for others; transfer of payments for others via the internet; financial services in the nature of billing and payment processing services; arrangement and management of leases and tenancy; renting and leasing of real estate; real estate appraisal; real estate valuation, real estate financing, real estate investment; real estate brokerage services; real estate agency services; housing agency services; actuarial services; real estate management and consultancy services; rent collection; rental of offices (real estate); rental of apartments and flats; provision of financial information via the Internet; safety deposit and issuing of travel vouchers services; capital investments; financial evaluation [insurance, banking, real estate]; financial and asset management services; insurance and financial services; financial services provided by telecommunication means; financial consultancy and advisory services; online banking; banking services provided on-line from a computer databases or the Internet; securities brokerage services, stock exchange quotation services; stocks and bonds brokerage, financial analysis; debit card services, charge card services and cheque guarantee services; banking, savings account and investment services; financial clearing services; credit verification via global computer information network; electronic credit risk management services; electronic purchase payment and electronic bill payment services; financial accounts debiting and crediting services; electronic banking services; issuance of stored value cards, charge cards and debit cards; telephone credit cards services; information services relating to finance and insurance, provided online from a computer database or Internet; agency for collection of gas and electricity fees; antique appraisal; art appraisal; jewelry appraisal; used car appraisal; tax information supply; charitable fund raising; organizing of charitable collections; charitable collections; rental of paper money and coin counting or processing machines; rental of cash dispensers or automated-teller machines; online payment services; arranging finance for construction projects; consultancy, information and advisory services relating to the aforesaid services; import-export clearance agencies (custom clearance); all included in class 36.

Contested services in Class 38

The contested telecommunications services are identically included in the opponent’s list of services in Class 38.

Some of the contested services allow people to talk to one another and/or transmit data, images, video or other information. Those services are the following:

Providing web-based multimedia teleconferencing, videoconferencing, and online meeting services that allow simultaneous and asynchronous viewing, sharing, editing, and discussion of documents, data, and images by participants via a web browser; interactive telecommunications services; telecommunication of information (web pages), computer programs and data; communication by computer terminals; communication by fibre optic networks; computer aided transmission of messages and images; facsimile transmission; message sending; paging services; data communication services by electronic means; electronic message sending, receiving and forwarding services; collection, transmission and delivery of data by electronic means; collection, transmission and delivery of mail messages, still picture and/or moving picture information such as characters, messages, music and images, telegrams, information and data by mechanical, electronic, telephone, telex, cable, computer and satellite means; transmission, broadcast and reception of audio, video, still and moving images and data whether in compressed or uncompressed form and whether in real or delayed time; electronic messaging, conferencing and order-transmission services; video conferencing services; communication by electronic bulletin board that enables users to perform a real-time interactive talk between a computer terminal and an electronic bulletin board containing still picture and moving picture information and voice information such as characters; providing electronic bulletin boards and message boards for transmission of messages; provision of online discussion forums; transmission of music, films, interactive programmes, videos, electronic computer games; transmission of information relating to on-line shopping and general retail services; video-on-demand transmission services; news agency services; communication services, namely, text and numeric digital messaging services; transmission of information by data communications for assisting decision making; transmission of information through video communication systems; web conferencing services; electronic communication services for establishing virtual chatrooms via text messaging; providing electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business leads and opportunities; providing an online interactive bulletin board for the posting, promotion, sale and resale of items via a global computer network; providing electronic mail and electronic mail forwarding services; audio and video communication via computers and computer networks, and via a global communications network.

Some of the contested services provide access for consumers to different platforms, databases, web facilities, etc., where information can be consulted or obtained. Those services are the following:

Providing customers with online access to online reports regarding the performance, effectiveness, and status of web-based applications, teleconferences, videoconferences, and meetings; providing users with secure remote access via the Internet to private computer networks; providing online collaboration services allowing users to access applications, platforms, jointly-shared documents, data, task lists, and discussion forums; provision of telecommunication access and links to computer database and to the Internet; electronic communication services; providing telecommunications connections to the Internet or data bases; provision of telecommunication access to world-wide web facilities and structures; providing access to computer database on the global computer network for searching and retrieving information, data, web sites and resources available on computer networks; providing user access to a computer database containing electronic publications, bulletin boards, database and information accessible via computer; operation of chat rooms (chat room services); multiple user access to global computer information networks for the transfer and dissemination of a wide range of information; providing access to a website on a global computer network by which third parties can offer goods and services, place and fulfill orders, enter into contracts and transact business; providing access to an interactive website on a global computer network for third parties to post information, respond to requests and place and fulfill orders for products, services and business opportunities; providing computer access to online interactive bulletin boards and databases; providing access to electronic bulletin boards for the posting and transmission of messages among and between computer users concerning products, services and business opportunities; providing access to electronic calendar, address book and electronic notebook, via local and global computer networks; providing distant video and/or telephone conferencing access and facilities; providing computer links to third party web sites to facilitate e-commerce and real world business transactions.

Some of the contested services transmit (broadcast) particular information to consumers. Those services are the following:

Internet broadcasting services, providing an online database of information regarding web-based broadcasting complaint submission platform; television broadcasting services; broadcasting and transmission of radio and television programmes; music broadcasting.

Some of the contested services are renting and leasing services that primarily allow consumers to use particular goods for telecommunication purposes (e.g. modems) or allow them to perform a certain activity (e.g. access boards and databases) likewise related to communication, upon payment of a fee. It is common nowadays for companies offering telecommunication services to also offer the option of renting the goods to which these contested services refer. Those services are the following:

Rental of modems; rental of telecommunication equipment; leasing access time to online interactive bulletin boards and databases.

The opponent’s services in Class 38 include, inter alia, the broad category of telecommunications, which are services intended to allow people to talk to one another, transmit messages or allow oral or visual communication between individuals (e.g. radio or television).

The contested services listed above are all included in the broad category of the opponent’s telecommunications, and these services are, therefore, identical.

The contested consultancy, information and advisory services relating to the aforesaid services; all included in class 38 relate to the various services included in the broad category of the opponent’s telecommunications. Consultancy, information and advisory services are frequently offered as part of other services, to help consumers with any doubts or problems before the purchase of those services and during their use. In this case, the companies offering the consultancy, information and advisory services are the same companies that provide the contested services listed.

Accordingly, these contested services of consultancy, information and advisory services relating to the aforesaid services; all included in class 38 are included in the broad category of the opponent’s telecommunications, and these services are therefore identical.

Contested services in Class 42

Hardware includes computers, as a broad category. Therefore, the contested design and development of computer hardware and software are identical to the opponent’s design and development of computers and software, and it is not possible for the Opposition Division to filter computers from the category of hardware.

The contested provision of computer security risk management programs; computer security information, knowledge, and testing services; access control to (security services for-) computers, electronic networks and databases; security of data transmission and of transactions via computer networks; consultancy in the field of data security; technological consultancy concerning securing telecommunications; computerized communication network security services; providing information in the fields of Internet, world wide web and computerized communication network security and the secure transmission of data and information; consulting services in the fields of Internet, world wide web and computerized communication network security services, information security services, secure data and information transmission services; authentication services for computer security; computer and electronic signal coding and decoding; testing and evaluation services; quality assurance services; computer services relating to certification of business transactions and preparation of reports therefore; on-line authentication of electronic signatures; off-site data backup; electronic data storage consist of services related to the secure use of computers in terms of possible criminal or fraudulent use by third parties, the secure transmission of data so as to prevent hacking by non-authorised individuals and the possibility of recovering any lost or damaged data. These services are either identical or similar to the opponent’s computer security relating to means of payment; design and development of electronic payment systems and security systems for financial transactions, in particular on the Internet or any other computer networks in Class 42. The identity between some of the services is because the contested services either overlap with the opponent’s services or include them as broad categories, or vice versa. The similarity between some of them results from the fact that they have some characteristics in common (e.g. they have the same nature and/or purpose, target the same consumers and are likely to come from the same kinds of undertakings).

The contested design of computers, notebook computers, laptop computers, portable computers and handheld computers; design of personal digital assistants and personal media players; design of mobile telephones and smart phones; design of digital cameras; computer software design; computer system design are either identical or similar to the opponent’s design and development of computers and software. The identity between some of the services is because they are included identically in both lists or the contested services overlap with the opponent’s services or include them as broad categories, or vice versa. The similarity between some of them results from the fact that they have some characteristics in common (e.g. they have the same nature and/or purpose, target the same consumers and are likely to come from the same kinds of undertakings).

The contested computer services; computer integration services; computer analysis services include, as broader categories, the opponent’s technological services relating to computers and banking, computer analysis, also in Class 42. It is impossible for the Opposition Division to filter these services from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested computer programming; computer programming in relation to the defence against virus; computer system software services; computer services relating to customized searching of computer databases and websites; providing online non-downloadable software for facilitating the interoperability of multiple software applications; providing search engines are either identical or similar to the opponent’s computer programming, development, installation, management, maintenance, servicing and updating of computer systems or Internet, intranet or extranet site in Class 42. The identity between some of the services is because they are included identically in both lists, they overlap or they include others as broad categories. The similarity between some of them results from the fact that they have some characteristics in common (e.g. they have the same nature and/or purpose, target the same consumers and are likely to come from the same kinds of undertakings).

The contested application service provider (ASP) services, namely, hosting computer software applications of others; design and development of webpages; hosting webpages for others; hosting computer application software for searching and retrieving information from databases and computer networks are identical to the opponent’s development, installation, management, maintenance, servicing and updating of secure computer sites (websites); hosting of computer sites (websites). The identity between them is because they are included identically in both lists, they overlap or they include others as broad categories.

The contested computer service relating to creating indexes of information, sites and resources on computer networks; conversion of physical data and documents into electronic media format all consist of the management of data. These services are either identical or similar to the opponent’s reconstruction of databases, technical project studies, appraisals (surveying) in Class 42. The identity between some of them is because the contested services overlap with the opponent’s services or include them as broad categories, or vice versa. The similarity between some of them results from the fact that they have some characteristics in common (e.g. they have the same nature and/or purpose, are complementary and are likely to come from the same kinds of undertakings).

The contested scientific and technological services and research and design relating thereto, industrial analysis and research services are similar to the opponent’s software development (design). These services have the same nature and can have the same producers and end users.

The contested computer services in connection with transmitting information, data, documents, and images over the Internet; application service provider (ASP) services providing software in the fields of web-based conferencing, audio conferencing, electronic messaging, document collaboration, video conferencing, and voice and call processing; computer services, namely, creating an on-line community for registered users to participate in discussions, get feedback from their peers, form virtual communities, engage in social networking, and exchange documents; providing direct connection services between computer users for exchanging data; cloud computing consist of services that give consumers access to different kinds of data (documents, videos, etc.) either by direct exchange (e.g. audio conferencing) or direct access (e.g. online access to data stored, cloud computing). These contested services are therefore similar to the opponent’s telecommunications in Class 38. They can have the same producers and distribution channels and are complementary.

The contested technical support services relating to computer software and applications provided online, by email and by telephone; computer technology advice provided to Internet users by means of a support hotline; providing technical information at the specific request of end-users by means of telephone or global computer network; consultancy services in relation to computer software; computer and network information services; providing information on computer technology and programming via a web site consist mainly of providing information and advice to consumers, in relation to software and/or hardware. These services are frequently offered by the same companies that develop hardware or software, or sell them. The contested services are similar to the opponent’s design and development of computers and software; computer programming, development, installation, management, maintenance, servicing and updating of computer systems or Internet, intranet or extranet site in Class 42, since they have the same nature and distribution channels, target the same consumers and are likely to come from the same kinds of undertakings.

The contested consultancy, information and advisory services relating to the aforesaid services refer to all the applicant’s services in Class 42. These kinds of services are frequently offered in order to help consumers with any doubts or problems before the purchase of those services and during their use. The companies offering these contested services of consultancy, information and advice are the same companies that provide the remainder of the contested services in Class 42, in relation to which these doubts or problems occur. Therefore, these contested services, as far as they are offered in relation to services similar or identical to the services of the opponent, are similar to the latter. They have the same nature, target the same consumers and come from the same kinds of undertakings.

The contested architectural and design services; interior designs of buildings, offices and apartments; cartography services; consultancy, information and advisory services relating to the aforesaid services are dissimilar to all the goods and services on which the opposition is based. Even though these contested services use some of the opponent’s goods and services, this is not sufficient for a finding of similarity between them. The contested services differ from the opponent’s goods and services in nature, purpose, method of use, distribution channels and points of sale. In addition, they are neither complementary nor in competition, and are not likely to come from the same kinds of undertakings.

2. The signs

ITAÚ
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking and Portuguese-speaking parts of the relevant public.

Visually, the earlier mark is a word mark formed of the sequence of letters ‘ITAÚ’. The contested mark is a figurative sign, formed of a single verbal element, the sequence of letters ‘itao’ in a slightly stylised typeface.

Part of the public might perceive the dot of the letter ‘i’ of the contested sign as a four-pointed star and the letter ‘o’ of the same mark as containing the shape of a moon.

The signs are visually similar to the extent that they both contain the sequence of letters ‘ita’.

The marks differ in their last letters, ‘Ú’ in the earlier mark and ‘O’ in the contested sign, in the slightly stylised typeface of the contested sign and in the star and moon shapes referred to above.

Aurally, the pronunciation of the signs is the same in the syllables /i/ta/, identically contained in both marks, and occupying the same positions in them (i.e. first and second, reading from left to right).

The signs differ in the sound of their last letters, ‘Ú’ and ‘O’, which, despite being different vowels, sound similar in both Spanish and in Portuguese, even though the letter ‘U’ is accentuated.

The part of the public that perceives the figurative elements referred to above (i.e. the star and moon shapes in the contested sign) will not refer to these elements aurally.

Therefore, the marks are aurally highly similar.

Conceptually, for the public in the relevant territory that does not perceive the figurative elements in the contested mark (i.e. the star and moon shapes), neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, for the part of the public that perceives the star and moon shapes in the contested mark, even though the word ‘itao’ accompanying them does not have any meaning, the shapes will convey the concepts of a star and a moon respectively. In this scenario, since the earlier mark lacks any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. 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 under comparison have no elements which could be considered clearly more distinctive than other elements.

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

However, if the star and the moon shapes are perceived in the contested mark, they will be seen as less distinctive, being merely decorative shapes. Therefore, the more distinctive element in this mark is the word ‘itao’, and more attention will be paid to it than to the figurative elements. In addition, these figurative elements have less visual impact than the word ‘itao’ itself and, as explained, may go unnoticed when the mark is perceived.

4. 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.

5. 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 both average consumers and professionals or business customers with specific professional knowledge or expertise. The degree of attention will vary from average to higher than average, depending on the characteristics of the goods and services being purchased (i.e. it will be higher than average if they are expensive, are purchased infrequently or are highly specialised goods and services needing professional expertise).

6. Global assessment, other arguments and conclusion

The contested goods and services are partly identical, partly similar (to different degrees) and partly dissimilar to the opponent’s goods and services.

The signs are visually similar and aurally highly similar.

The signs both contain the sequence of letters ‘ita’.

The marks differ in their last letters, ‘Ú’ in the earlier mark and ‘O’ in the contested sign, which are aurally similar for Portuguese-speaking and Spanish-speaking consumers. Therefore, this difference is not aurally striking. It is also not visually striking, since the differing letters are positioned at the end of the marks, which is always the last part to be read and pronounced when referring to them (i.e. reading from left to right)

The signs also differ in the slightly stylised typeface of the contested sign, which is not, per se, so striking as to make the overall impressions of the marks very different. Finally, the marks differ in the figurative elements of the contested mark (i.e. the moon and star), which will be perceived by at least part of the public. Even for those consumers who perceive these figurative elements, they are less distinctive than the verbal element. In any event, 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. Therefore, the verbal element ‘itao’ has a stronger impact on the consumer than its figurative elements.

The degree of attention paid during the purchase of the goods and services involved is deemed to vary from average to higher than average.

The average consumer of the category of goods and services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, according to the principle of imperfect recollection, average consumers rarely have the chance to make a direct comparison between the different marks, but must trust in their imperfect recollection of them. Therefore, the consumers might believe that the conflicting goods and services found to be identical or similar (even if only to a low degree) come from the same undertaking or economically-linked undertakings.

In addition, having regard to the principle of interdependence (i.e. a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods or services, and vice versa), it is considered that the aural and visual similarities between the signs, together with the identity and similarity of the goods and services, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods and services found to be identical or similar (even if only to a low degree) come from the same undertaking or economically-linked undertakings.

Even though part of the public might pay special attention during the purchase of the goods and services involved, the fact that the signs have significant similarities, together with the fact that the similar signs cover such a large number of similar and identical goods and services, might lead consumers to think that the goods and services come from the same undertaking or economically-linked undertakings. Accordingly, even though the degree of attention might be higher than average in relation to some of the goods and services in question, this will not be enough to avoid such confusion and/or association under the present circumstances.

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 partially well founded on the basis of the opponent’s Community 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 opposition is also successful insofar as the goods and services that are similar to a low degree are concerned, since the significant similarity between the signs at issue is clearly enough to outweigh the low degree of similarity between those goods and services.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Liliya YORDANOVA

Alexandra APOSTOLAKIS

Martina GALLE

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.