OPPOSITION No B 2 425 059

SwarmWorks Ltd., Langbaurghstr. 17, 53842 Troisdorf, Germany (opponent), represented by Liesegang & Partner mbB, Rechtsanwälte, Kettenhofweg 1, 60325 Frankfurt am Main, Germany (professional representative)

a g a i n s t

SwarmOnline Limited, The Hub (Unit 2.2.10), Pacific Quay, Glasgow G51 1DZ, United Kingdom (applicant), represented by Lawrie IP Limited, The Hub, Pacific Quay, Pacific Drive, Glasgow G51 1EA, United Kingdom (professional representative).

On 30/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 425 059 is upheld for all the contested goods and services.

2. European Union trade mark application No 12 954 509 12 954 509is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 954 509. The opposition is based on, inter alia, European Union trade mark registration No 11 313 004. The opponent invoked Article 8(1)(b) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 313 004.

1. The goods and services

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

Class 9: Scientific apparatus and instruments; teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; computer programs and software; networks (hardware); interoperably and interactively networked computers for the collection, storage and display of data and for communications, in particular for interactive communications as a large group in a digital network; digital interactive apparatus and installations composed thereof, in particular dialog apparatus and dialog systems for digital moderation and networking and interactive communications between a large group of users networked in a digital network; apparatus and instruments for digital communications; data processing equipment and computer software for interactive communications, including via the internet, between several users networked over a digital network during an event, in particular for voting at events and congresses; software, in particular communications software for interactive communications in digitally networked networks.

Class 35: Business advice and consultancy; business management and organization consultancy, in particular relating to the development of ideas, solutions, strategies and visions; systematisation, compilation, updating, collection and structuring of data (information) in computer databases.

Class 38: Providing access to computer programs on data networks.

Class 41: Education, providing of training, entertainment, sport and cultural activities; training and further training consultancy; organising, arranging and conducting of conferences, congresses, symposiums, meetings, seminars and workshops; consultancy relating to didactics and methodology for large group workshops, seminars, meetings, events, symposiums, congresses or conferences; conducting of further training events, training courses, training measures, including via the internet; all the aforesaid services included in class 41.

Class 42: Design and development of computer hardware and software; scientific and technological services; upgrading of computer software; computer systems design; design of computer systems and computer software; computer programming; technical testing, technical testing; rental of technical equipment, in particular for a computer network (hardware), for conducting meetings, seminars, workshops, conferences, congresses and symposiums; technological services for conducting interactive events and development of methods for conducting interactive events, in particular for using the collective intelligence of a large group; development and creation of digital communications and moderation methods for using the collective intelligence of a large group networked in a digital network, in particular with the option of interactive communication; scientific evaluation of the results of large group workshops, seminars, meetings, events, symposiums, congresses or conferences.

After a limitation to the specification of goods and services made by the applicant on 05/07/2015 and partially accepted by the Office, the contested goods and services are the following:

Class 9: Mobile applications; application software; computer software; computer software applications; downloadable computer software applications.

Class 41: Training and education services; training and education services related to mobile application design and development; training in the field of computer software; publishing of electronic publications; publishing of newsletters and reviews; publishing services carried out by computerised means; providing on-line publications [non-downloadable]; advisory, information and consultancy services relating to all of the aforesaid.

Class 42: Computer software design and development; software as a service [SaaS]; design and development of mobile applications; design and development of web applications; implementation of computer software; maintenance and updating of computer software; computer software engineering; custom design of software packages; design and development of computerised content management systems; configuration of computer systems and networks; design and development of software for secure network operations; monitoring of network systems; computerised analysis of data; technical data analysis services; creation, design and development of websites for others; advisory, information and consultancy services relating to all of the aforesaid.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Contested goods in Class 9

The contested mobile applications; application software; computer software; computer software applications; downloadable computer software applications are included in the broader category of the opponent’s computer software. Therefore, they are identical.

Contested services in Class 41

The contested training and education services, albeit worded slightly differently, are identical to the opponent’s education, providing of training.

The contested training and education services related to mobile application design and development; training in the field of computer software are included in the broad category of the opponent’s providing of training. Therefore, they are identical.

The contested advisory, information and consultancy services relating to all of the aforesaid (training and education services; training and education services related to mobile application design and development; training in the field of computer software) are included in the broad category of, or overlap with, the opponent’s training and further training consultancy. Therefore, they are identical.

The contested publishing of electronic publications; publishing of newsletters and reviews; publishing services carried out by computerised means; providing on-line publications [non-downloadable] and the opponent’s software, in particular communications software for interactive communications in digitally networked networks in Class 9 may serve the same general purpose, as it is becoming common to distribute books, magazines and newspapers in the form of electronic publications to consumers through tablet reading devices by means of software applications. The goods and services target the same relevant public and may be produced or provided by the same undertakings. Therefore, they are similar.

The contested advisory, information and consultancy services relating to all of the aforesaid (publishing of electronic publications; publishing of newsletters and reviews; publishing services carried out by computerised means; providing on-line publications [non-downloadable]) are closely related to the services in relation to which they are provided and, therefore, also have certain points in common with the opponent’s software, in particular communications software for interactive communications in digitally networked networks in Class 9. These goods and services target the same relevant public and may be produced or provided by the same undertakings through the same distribution channels. Therefore, they are similar to a low degree.

Contested services in Class 42

The contested computer software design and development are also among the opponent’s services in Class 42. Therefore, they are identical.

The contested design and development of mobile applications; design and development of web applications; custom design of software packages; design and development of computerised content management systems; design and development of software for secure network operations are included in the broad category of, or overlap with, the opponent’s design and development of computer software, which refers to design and development services for the creation of all types of programs and other operating information used by a computer. Therefore, they are identical.

The contested implementation of computer software encompasses all the post-sale processes involved in computer software operating properly in its environment, including analysing requirements, installation, configuration, customisation, running, testing, systems integrations, user training, delivery and making necessary changes. The contested maintenance and updating of computer software refers to the modification of a software product after delivery to correct faults or to improve performance, security or other attributes. The abovementioned contested implementation of computer software; maintenance and updating of computer software include, as broader categories, or overlap with the opponent’s upgrading of computer software, which refers to the replacement of software with a newer or better version, to bring the system up to date or to improve its characteristics. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested computer software engineering is the application of engineering to the design, development, implementation and maintenance of software in a systematic way. Consequently, these contested services cannot be clearly separated from the opponent’s design and development of computer software. Therefore, they are identical.

The contested configuration of computer systems and networks is the arrangement of functional units of computer systems and networks according to their nature, number and chief characteristics. Often, configuration pertains to the choice of hardware, software, firmware and documentation. These services cannot be clearly separated from the opponent’s computer systems design, which refers to all the activities involved in conceptualising, framing, implementing, commissioning and modifying complex computer systems. These services overlap and are, therefore, identical.

The opponent’s scientific and technological services are various services provided in relation to the theoretical and practical aspects of complex fields of activities, such as the services of engineers and scientists who undertake evaluations, estimates, research and reports in the scientific and technological fields. Consequently, the contested technical data analysis services are included in the broad category of the opponent’s scientific and technological services. Therefore, they are identical.

The contested software as a service [SaaS] is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. These contested services cannot be rendered without the opponent’s design and development of computer software and, therefore, these services are complementary. Accordingly, they may target the same consumers, may be provided by the same undertakings and are likely to be distributed through the same channels. Therefore, these services are similar.

The contested creation, design and development of websites for others concern the work involved in developing a website for the internet or an intranet. This includes many different skills and tasks such as web engineering, web design and web content development, and may also include writing, mark-up and coding. Consequently, although these services are not purely programming services, they are closely related to the opponent’s design and development of computer software. They may target the same consumers, may be provided by the same undertakings (IT specialists) and are likely to be distributed through the same channels. Therefore, these services are similar.

The contested monitoring of network systems are the services of monitoring of a computer network system for slow or failing components and problems. These services are related to the opponent’s upgrading of computer software, since both sets of services relate to the security, protection and restoration of software. They target the same consumers, may be provided by the same undertakings (IT specialists) and are likely to be distributed through the same channels. Therefore, these services are similar.

The contested computerised analysis of data and the opponent’s design and development of computer software have certain points in common, as the contested services are computer services for the analysis of data. These services are or include the provision of IT services, such as the provision and use of software and tools for computer assisted qualitative data analysis and have, therefore, similar purposes. They may be provided by the same undertakings and target the same relevant public. Therefore, they are similar.

The contested advisory, information and consultancy services relating to all of the aforesaid (computer software design and development; software as a service [SaaS]; design and development of mobile applications; design and development of web applications; implementation of computer software; maintenance and updating of computer software; computer software engineering; custom design of software packages; design and development of computerised content management systems; configuration of computer systems and networks; design and development of software for secure network operations; computer design; monitoring of network systems; computerised analysis of data; technical data analysis services; creation, design and development of websites for others) are all advisory, information and consultancy services in the field of computers and IT. These services and the opponent’s design and development of computer software are IT-related services with the same general purpose, and they target the same consumers. Moreover, they may be complementary. Therefore, they are similar.

2. 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 (to different degrees) target both the public at large and business customers (e.g. computer software in Class 9 may be provided to the general public and to business customers with specific business needs), as well as professionals with specific knowledge or expertise in, inter alia, the IT field (e.g. training and education services related to mobile application design and development in Class 41). The relevant public’s degree of attention will vary from average to higher than average, depending on the exact nature of these goods and services and their impact on the economic activities of the business customers in question.

3. The signs

	SWARM
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a figurative mark, containing the verbal element ‘SwarmWorks’, in rather standard dark-blue letters, in which the sequence of letters ‘Swarm’ is in bold and the sequence of letters ‘Works’ is in a regular font. The letters ‘S’ and ‘W’ are in upper case, whereas the remaining letters are in lower case. To the left of the verbal element is a figurative element in orange and blue, depicting sections of a spherical surface.

The relevant public will perceive the verbal element ‘SwarmWorks’ of the earlier mark as consisting of the words ‘Swarm’ and ‘Works’, which are differentiated as separate words by their visual depiction in bold and in a regular font, respectively, and by the upper case letter at the beginning of each word.

The contested sign is a word mark, ‘SWARM’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

Neither of the marks has any element that could be clearly considered more dominant (visually eye‑catching) than other elements.

The figurative element of the earlier mark will not be associated with a particular concept and has a normal degree of distinctiveness.

The word ‘Swarm’, included and identifiable as an element in the earlier mark and constituting the contested sign, will be perceived by the English-speaking part of the public as meaning ‘a large or dense group of flying insects’ or ‘a large number of people or things’. Another part of the public (e.g. the French-, Italian- and Spanish-speaking parts of the public) will not attribute any meaning to the coinciding word ‘Swarm’. This word has a normal degree of distinctiveness, as it is not descriptive or lacking distinctiveness for the relevant goods and services for the public in the relevant territory; it does not describe or allude to any of their essential characteristics.

Consequently, the contested sign has no element that could be considered clearly more distinctive than other elements.

The word ‘Works’, included in the earlier mark, is an English word that will be perceived by the English-speaking part of the public as, inter alia, a noun meaning ‘a place or premises in which industrial or manufacturing processes are carried out’ (information extracted from Oxford Dictionaries on 28/04/2016 at http://www.oxforddictionaries.com/). This word is weaker than average for the goods and services at issue, as it may be perceived as indicating a place where things are made or industrial processes take place. Therefore, the impact of this element is limited when assessing the similarity between the marks for that part of the public. Consequently, for the English-speaking part of the public the verbal element ‘SWARM’ and the figurative element are more distinctive than the other verbal element, ‘WORKS’, of the earlier mark. The juxtaposition of the elements ‘SWARM’ and ‘WORKS’ does not create a meaningful expression in English, as these words do not go together naturally. The expression ‘SwarmWorks’ will be perceived as the sum of its parts. Another part of the public (e.g. the French-, Italian- and Spanish-speaking parts of the public) will not attribute any meaning to the word ‘Works’ of the earlier mark and will perceive it as a fanciful term. Consequently, the earlier mark has no elements that could be considered clearly more distinctive than other elements for that part of the relevant public.

Visually, the signs coincide in the sequence of letters ‘SWARM’, which constitute the entire contested sign and are fully included at the beginning of the verbal element of the earlier mark. However, the marks differ in the additional letters contained in the verbal element of the earlier mark, ‘Works’, in the figurative element of that mark and in its stylisation, which, although not very elaborate, allows the element ‘SwarmWorks’ to be perceived as two separate words.

The word that the signs have in common, ‘Swarm’, occurs at the beginning of the earlier mark, where it is identified as an independent element by its graphical depiction. It should be noted that consumers generally tend to focus on the first verbal element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the beginning of the sign (the initial part) the one that first catches the attention of the reader.

As regards the figurative element of the earlier mark, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, considering the coincidence in the first verbal element, ‘Swarm’, which is distinctive, the marks are visually similar to an average degree for the part of the public that will perceive the word ‘Works’ of the earlier mark as fanciful.

The word ‘Works’ of the earlier mark will play a less important role in the overall impressions conveyed by the marks for the part of the public that understands its meaning, due to its weaker than average distinctive character. However, taking into account all the elements of the marks that influence the consumer’s visual perception of them, including the differing figurative element in the contested sign, and considering the coincidence in the verbal element ‘Swarm’, the marks are visually similar to an average degree also for that part of the public.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘SWARM’, which constitute the contested sign and the first word of the earlier mark. The pronunciation differs in the sound of the additional word in the earlier mark, ‘Works’, which has no counterpart in the contested sign.

As mentioned above, part of the relevant public will pay less attention to the word ‘Works’, as it will be perceived as a weak element, and will focus on the more distinctive elements of the signs. Therefore, for that part of the public the signs are aurally similar to a high degree.

For the remaining part of the public, for which all the verbal elements of the marks have a normal degree of distinctive character, the signs are aurally similar to an average degree.

Conceptually, as seen above, the word ‘Swarm’, constituting the entire contested sign and present at the beginning of the verbal element of the earlier mark, will be perceived by the English-speaking part of the public as meaning ‘a large or dense group of flying insects’ or ‘a large number of people or things’. The word ‘Works’ of the earlier mark may be perceived by that part of the relevant public as a noun meaning ‘a place or premises in which industrial or manufacturing processes are carried out’. For that part of the public, due to its weaker than average distinctive character this word will play a less important role in the overall impressions conveyed by the marks. Consequently, for that part of the public, the marks are conceptually similar to a high degree on account of the coinciding word, ‘Swarm’.

Another part of the public (e.g. the French-, Italian- and Spanish-speaking parts of the public) will not attribute a meaning to any of the elements of the marks. For that part of the public, 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 for that part of the public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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, despite the presence of a less distinctive element in the mark for a part of the public as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are identical or similar to different degrees. The signs are similar on account of the coinciding word ‘Swarm’, which is the only element of the contested sign and plays an independent and distinctive role in the earlier mark. The signs differ as a result of the additional word of the earlier mark, ‘Works’, as well as the mark’s figurative element and the stylisation of its verbal elements.

It is acknowledged that the word ‘Works’ in the earlier mark will not go unnoticed by the relevant public. Nevertheless, according to settled case law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (02/11/2003, T‑286/02, Kiap Mou, EU:T:2003:311; 15/02/2005, T‑169/02, Negra modelo, EU:T:2005:46; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102; 08/03/2005, T‑32/03, Jello Schuhpark, EU:T:2005:82; 06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292; 23/10/2002, T‑104/01, Fifties, EU:T:2002:262; 04/05/2005, T‑22/04, Westlife, EU:T:2005:160), and this element that the marks have in common retains an independent distinctive role in another composite mark (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 30).

As seen above, due to its graphical depiction and its meaning for a part of the public, the word ‘Swarm’ is distinguishable in the earlier mark and plays an independent role within it, since it has an average degree of distinctiveness in relation to all the relevant goods and services and is positioned at the beginning of the verbal element of the mark. This coinciding element will also establish a conceptual link between the signs for a part of the public, thus further contributing to the finding of similarity between the marks. Moreover, for a part of the public the additional word, ‘Works’, of the earlier mark is less distinctive in relation to the relevant goods and services and will play a less important role in the overall impressions conveyed by the marks.

All the aforementioned findings lead to the conclusion that the marks create similar overall impressions.

Therefore, considering that average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, even considering that the degree of attention with regard to some of the relevant goods and services may be higher than average.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).

In the present case, consumers may legitimately believe that the contested trade mark, ‘SWARM’, is a new version or a brand variation of the earlier figurative mark, ‘SwarmWorks’, originating from the same undertaking or from economically-linked undertakings. In other words, consumers may confuse the origins of the conflicting goods and services.

The applicant argues that its EUTM application enjoys unregistered rights and has a reputation as a result of its use. The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Consequently, this argument of the applicant must be set aside.

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 313 004. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the abovementioned earlier mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martina GALLE

Alexandra APOSTOLAKIS

Solveiga BIEZA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.