OPPOSITION No B 2 437 203
Layar B.V., Rietlandpark 301, 1019 DW Amsterdam, The Netherlands (opponent), represented by Squire Patton Boggs (UK) LLP, 7 Devonshire Square, London EC2M 4YH, United Kingdom (professional representative)
a g a i n s t
Layer Inc., 260 King St., 735 San Francisco, California 94107, United States of America (applicant), represented by Groom Wilkes & Wright LLP, The Haybarn Upton, End Farm Business Park, Meppershall Road, Shillington, Hitchin, Hertfordshire SG5 3PF, United Kingdom (professional representative).
On 22/08/2017, the Opposition Division takes the following
Class 9: Computers; computer hardware and software; computer software development tools.
Class 35: Retail services in the field of computer hardware and software, telecommunications apparatus and instruments.
Class 42: Scientific and technological services and research and design relating thereto; application service provider (ASP); advisory and consultancy services in relation to all the aforesaid.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods and services of
European Union trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer hardware and computer software; communications and telecommunications apparatus and instruments; computer software for uploading, sending, manipulating and enlarging media objects and other digital content, including texts, documents, photographs, images, video and audio; computer software for transmission of audio and video by means of a communications network; computer software for metadata tagging and website tagging; apparatus for recording, transmission or reproduction of sound or images; data processing apparatus and computers, namely computers and computer software for transmission and synchronisation of data between portable communication apparatus; electronic hand-held apparatus intended for the wireless transmission of data and/or voice signals; computer communication software for the synchronisation, transmission and sharing of data, including data related to the keeping of an electronic diary, the contents of messages between one of more electronic hand-held devices and data stored on or linked to a computer.
Class 38: Telecommunications; providing access to the Internet; providing access to electronic databases, providing access to GPS navigation services; electronic mail; wireless messaging services; in particular telecommunications services that enable a user to send and /or receive messages via a wireless data network; data communication via the Internet for the uploading, posting, demonstration, displaying, tagging, blogging, sharing or otherwise providing of electronic media or information; webcasting services; providing online chat rooms and electronic bulletin boards for the transmission of messages, images, sounds, geographic information (geotagging) and other data between computer users; photographic and image processing, namely providing online access to digital images via a global computer network; wireless transmission of data, namely services that enable a user to send and receive messages via a wireless data network using a hand-held portable electronic device; telecommunication services for the transmission and reception of voice communication; broadcasting radio and/or television programmes; news agencies; news services; providing online chat rooms and electronic bulletin boards for the transmission of messages between computer users; providing mobile and fixed communication channels as well as communication via (mobile) telephone; voice messaging services; data communications by radio, telecommunications and satellite; facilitating access to a worldwide computer network for downloading computer software, computer programs and information; e-mail services; providing access to databases; providing multiple user access to a global computer information network; consultancy and information regarding the aforesaid services, whether or not via the Internet, online or via other (electronic) channels; aforementioned services amongst others via the Internet or other electronic networks.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; entertainment services; publication of information on virtual communities, social networks, locations and businesses; photography services; sharing of photographs, in particular online publication of digital photographs and transmission of photographs; management of digital photographs, in particular allowing others to upload images and arrange them online using tags; providing informative, educational and cultural information on special events and parties, recreation, history, locations, businesses, education and booking seats for shows; providing online publications in the form of electronic books, magazines, daily newspapers and other printed matter; providing interactive online computer games via computer networks and global communication networks; providing information in the fields of entertainment, films, music, sports and education via computer networks and global communication networks; online information services; the aforesaid services, whether or not provided via the Internet or other (electronic) networks.
The contested goods and services are the following:
Class 9: Computers; computer hardware and software; computer software development tools.
Class 35: Retail services in the field of computer hardware and software, telecommunications apparatus and instruments.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; application service provider (ASP); advisory and consultancy services in relation to all the aforesaid.
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
Computer hardware and software are identically contained in both lists of goods.
The contested computers include, as a broader category, the opponent’s computer hardware, since what we call a computer is actually a ‘system’, that is, a combination of components that work together. The hardware devices are the physical components of that system. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested computer software development tools are software, computer programmes or utilities used for creating, editing, maintaining and/or supporting other programmes, applications and software; therefore, they are included in the broader category of or overlap with computer software. Consequently, they are identical.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to those 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 in the field of computer hardware and software, telecommunications apparatus and instruments are similar to a low degree to the opponent’s computer hardware and computer software; telecommunications apparatus and instruments in Class 9.
Contested services in Class 42
The contested application service provider (ASP) involves the provision and management of software-based solutions (including software) over a network, such as hosting computer software applications for others. It coincides with the opponent’s facilitating access to a worldwide computer network for downloading computer software, computer programs and information in Class 38 in its purpose and providers; these services are distributed through the same channels. Moreover, they are complementary; therefore, they are similar.
The contested scientific and technological services and research and design relating thereto cover various scientific and technology-related activities that are concerned with research and experimental development and contribute to the generation, dissemination and application of scientific and technical knowledge. These services are mainly provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by professionals such as chemists, physicists, engineers, computer programmers, etc. These are in particular services of engineers in the fields of science who undertake evaluations, estimates, research and reports in the scientific and technological fields.
Taking this into account, the contested scientific and technological services and research and design relating thereto are similar to the opponent’s education in Class 41, given that universities carry out a lot of research and design, not only as a part of academic training but also as a stand-alone part of what they do. Universities bid on tenders to be able to provide scientific and technological research and design services, and as such this is a service that can be provided to third parties. Therefore, these services under comparison can be provided by the same providers and through the same distribution channels. They also coincide in their general purpose of acquiring and/or imparting or disseminating knowledge or skills. This applies not only to scientific and technological research and design but also to scientific and technological services as such, since as explained above scientific and technological services is a very broad category covering various activities, including research and design.
The contested advisory and consultancy services in relation to all the aforesaid are to be understood as advisory and consultancy services in relation to scientific and technological services and design research; advisory and consultancy services in relation to industrial analysis and research services and advisory and consultancy services in relation to application service provider (ASP).
Advisory and consultancy services refer to providing advice and consultation that is tailored to the circumstances or needs of a particular user and that recommends specific courses of action for the user; and, therefore, are classified in the class of the service that corresponds to the subject matter of the advisory or consultation. Advisory and consultancy services are in principle always similar, or even identical, to the services to which they relate.
Consequently, since the contested application service provider (ASP) and scientific and technological services and research and design relating thereto were found to be similar to the opponent’s facilitating access to a worldwide computer network for downloading computer software, computer programs and information and education, all of the contested advisory and consultancy services related to application service provider (ASP) and scientific and technological services and research and design relating thereto will also be similar to these services of the opponent for the same reasons as those explained above.
The remaining contested services, namely industrial analysis and research services and the related advisory and consultancy services, are dissimilar to all the opponent’s goods and services, since in essence industrial analysis and research services are a market assessment tool designed to provide a business with an overview of the complexity of a particular industry. These services are of a specialised nature and are likely to be provided to businesses developing technologies. Therefore, the contested services have nothing relevant in common with any of the opponent’s goods and services that would be sufficient to establish similarity between them. The Opposition Division does not agree with the opponent’s argument that the contested industrial analysis and research services in Class 42 are highly similar to the opponent’s providing informative, educational and cultural information on special events and parties, recreation, history, locations, businesses, education and booking seats for shows and to providing online publications in the form of electronic books, magazines, daily newspaper and other printed matter in Class 38 and that research services is nothing else than providing information.
Research is a creative investigation undertaken to gain knowledge and understanding. It covers activities of direct relevance to the needs of different fields, mainly commerce and industry. It also uses existing knowledge to introduce improvements in the field (see the University of Kent’s definition of research at https://www.kent.ac.uk/researchservices/about/what-is-research.html). The provision of information, on the other hand, refers to providing a user with materials (general or specific) about a matter or service without advising the user on specific courses of action. It is therefore apparent that the provision of information does not necessarily require original investigation, but can be a simple mechanical operation limited, for example, to the storage of data. What is more important is that the provision of information does not have the direct aim of stimulating progress in the concerned field. Finally, like advisory and consultancy services, the provision of information is tailored to the needs of a particular user and follows the service that corresponds to the subject matter involved. The subject matter involved in the provision of information is therefore very relevant. Taking into account that, in the present case, the opponent’s providing informative, educational and cultural information on special events and parties, recreation, history, locations, businesses, education and booking seats for shows and providing online publications in the form of electronic books, magazines, daily newspaper and other printed matter is related to education, culture, history, business and journalism, there is no similarity between the opponent’s services and the contested industrial analysis and research services, as defined above.
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 vast majority of the goods and services found to be identical or similar are directed at the public at large and some are directed at business customers with specific professional knowledge or expertise. The degree of attention will vary between average and high, depending on the technical nature of the goods, their price and the frequency of purchase.
Earlier trade mark
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, for which neither of the signs has a meaning.
The earlier mark is a word mark made up of the word ‘LAYAR’, which is meaningless for the Spanish-speaking public, has no distinguishable components and is therefore distinctive in relation to the relevant goods and services.
The contested sign is a figurative sign composed of a square with a slightly thicker bottom left-hand corner and the verbal element ‘Layer’ arranged on one line. The sign has no elements that could be considered clearly more dominant than other elements.
The word ‘Layer’ is meaningless as a whole for the relevant public, has no meaningful components and is therefore distinctive. Furthermore, it is more distinctive element of the contested mark because the remaining figurative element is a simple geometric shape that does not have the ability to indicate the commercial origin of the goods and services in question and so will attract less attention than the verbal element.
Visually, both signs are made up of five letters and they coincide in four of them. They differ in their penultimate letters (‘A’ in the earlier mark and ‘E’ in the contested sign’) and in the additional, simple, figurative element of the contested sign. It is taken into account, however, 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).
Therefore, the signs are visually highly similar.
Aurally, both marks are composed of two syllables. The first syllable in both signs, ‘LA’, is identical and their second syllables will be pronounced in highly similar ways in Spanish, despite the difference in one vowel. Furthermore, the signs coincide in their lengths, rhythms and intonations.
Therefore, the signs are aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory, considering that the additional figurative element of the contested sign does not introduce any particular concept capable of altering the conceptual perception of the signs. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
In the present case, the goods and services are partly identical, partly similar to an average and to a low degree and partly dissimilar. The signs are visually and aurally highly similar and the conceptual comparison does not influence the assessment. The earlier mark enjoys an average degree of distinctiveness.
Account is taken of the fact that average consumers, even those who pay a high degree of attention, rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Indeed, considering that the difference in the signs’ penultimate letters may easily be overlooked and despite the fact that the signs differ in the simple figurative element in the contested sign, it is highly conceivable that the relevant consumer will not be able to safely distinguish between the signs in the context of identical or similar (to different degrees) goods and services.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 8 332 165. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The likelihood of confusion exists even for the contested services found to be similar to a low degree to the opponent’s goods and services, because the high degree of similarity between the marks outweighs the low degree of similarity between the goods and services.
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 various degrees to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful 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
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.