OPPOSITION No B 2 449 992

WhatsApp, Inc., 650 Castro Street, Suite 120-219, Mountain View, California 94041, United States of America (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG MbB, Leopoldstr. 4, 80802 Munich, Germany (professional representative)

a g a i n s t

WhosApp GmbH, Zugspitzstrasse 15, 82049 Pullach, Germany (applicant), represented by Rechtsanwälte Eckart, Köster & Kollegen, Widenmayerstr. 48, 80538 Munich, Germany (professional representative).

On 31/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 449 992 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 147 012 is 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 13 147 012. The opposition is based on European Union trade mark registration No 9 986 514. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

In the notice of opposition, the opponent declared that the ground for the opposition was Article 8(1)(a) and (b) EUTMR, as can be seen in the opposition form, where only Article 8(1)(a) and (b) EUTMR is indicated. In addition, in the notice of opposition, the opponent claimed that the earlier mark had a reputation; however, it did not base the objection on Article 8(5) EUTMR. In the additional facts and evidence supplied by the opponent to substantiate the opposition, which were filed after the three-month period given for filing an opposition, the opponent made reference to Article 8(5) EUTMR as a ground for the opposition.

The grounds on which an opposition is based may be filed up to the deadline set to file the opposition, in accordance with Rule 15(2)(c) EUTMIR. However, such grounds may not be added after the expiry of this deadline. Therefore, the opponent may not extend the scope of the opposition to include Article 8(5) EUTMR as a ground for the opposition once this deadline has expired. Consequently, the Office will examine the opposition only on the ground of Article 8(1)(a) and (b) EUTMR. The enhanced distinctiveness of the earlier rights through intensive use and reputation claimed by the opponent can, however, be examined in the context of Article 8(1)(a) and (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.

1. The goods and services

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

Class 9: Data processing equipment and computers; instant messaging software; file sharing software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless, and telecommunication networks; computer software for processing images, graphics, audio, video, and text.

Class 38: Telecommunications; telecommunication services, namely, data transmission and reception services via telecommunication networks; electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunication networks; instant messaging services; mobile phone communication services.

Class 42: Design and development of computer hardware and software; technical support services, namely, troubleshooting of computer software problems; consulting in the field of computer software, and computer software design.

After a limitation to the specification of the goods and services, requested by the applicant on 12/12/2014 and accepted by the Office, the contested goods and services are the following:

Class 9: Navigation, guidance, tracking, targeting and mapping devices, apparatus and computer software; Communications equipment, devices and apparatus; Software; Computer software applications, downloadable; Not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers.

Class 38: Providing access to information on the Internet; Providing user access to computer programmes in data networks; Telephone and mobile telephone services; Electronic exchange of messages via chat lines, chat rooms and Internet forums; Cellular telephone communication; Computer aided transmission of messages and images; Telecommunications by means of platforms and portals on the Internet; Message sending; Provision of video conferencing services; Web messaging.

Class 42: Design and development of computer software; Updating of computer software; Electronic data storage; Preparation of data processing programmes; Software as a service [SaaS]; Technical user and rights administration on computer networks; Rental of computers and software; Not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers.

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

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 software; computer software applications, downloadable; not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers include, as broader categories, the opponent’s instant messaging software. Although certain types of software (e.g. for tracking goods) are explicitly excluded from the contested goods, a wide variety of software and software applications, inter alia, those for messaging, are included in the contested goods. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested navigation, guidance, tracking, targeting and mapping devices, apparatus and computer software; not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers are goods used for determining geographical location and/or for guiding a vehicle, person or object, or for determining parameters of an area and compiling and drawing a diagrammatic representation of its surface or a part thereof. They are electronic devices and software process data; therefore, they have a similar nature to the opponent’s data processing equipment and computers, which are items of equipment or interconnected systems or subsystems of equipment used in the automatic acquisition, storage, manipulation, management, movement, control, display, switching, interchange, transmission or reception of data or information. These goods may be manufactured by the same specialist companies in the field of electronics, and can be found in the same retail outlets. Furthermore, they may target the same users. Therefore, they are considered similar.

The contested communications equipment, devices and apparatus; not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers are devices that may need software to successfully support their functions. Therefore, there is complementarity between these goods and the opponent’s communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless, and telecommunication networks. The goods can have the same distribution channels and target the same users. They may also originate from the same manufacturers. Therefore, the goods are similar.

Contested services in Class 38

The contested providing access to information on the Internet; providing user access to computer programmes in data networks; telephone and mobile telephone services; electronic exchange of messages via chat lines, chat rooms and Internet forums; cellular telephone communication; computer aided transmission of messages and images; telecommunications by means of platforms and portals on the Internet; message sending; provision of video conferencing services; web messaging are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 42

The contested design and development of computer software; preparation of data processing programmes; not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers are included in the broad category of the opponent’s design and development of computer software. Therefore, they are identical.

The contested updating of computer software; not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers has characteristics in common with the opponent’s design and development of computer software. It is common in the relevant market sector for a software developer to provide additional services, such as updating. These services target the same users and have the same distribution channels. These services are, therefore, similar.

The contested technical user and rights administration on computer networks; not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers is similar to the opponent’s technical support services, namely, troubleshooting of computer software problems; consulting in the field of computer software, and computer software design. These services have similar natures and purposes, namely to ensure the correct operation of installed IT systems. They can be provided by the same companies and target the same users.

The contested electronic data storage; not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers are similar to the opponent’s design and development of computer software. They may derive from the same undertakings, have the same channels and target the same users.

The contested software as a service [SaaS]; not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers is a software licensing and delivery model in which software is licensed on a subscription basis and is centrally hosted. This service 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 users, may be provided by the same undertakings and are likely to be distributed through the same channels. Therefore, these services are similar.

The contested rental of computers and software; not for tracking products and goods flows and the individual tracking and monitoring of products and goods, expressly not including those services whereby offers are given to the localised user of the app that apply in their vicinity, based on their place of residence, including restaurants, goods distributors, leisure offers is similar to the opponent’s design and development of computer hardware and software. It is common for design and development companies to not only design tools for third parties, but also sell and rent them in the form of software, and this also extends to hardware. Consequently, these services may well derive from the same undertakings, have the same channels and target the same users.

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 and similar are directed at the public at large as well as at business customers. The degree of attention will vary from average to higher than average, depending on the price and sophistication of the goods and services, as some of the relevant goods and services can have a significant impact on the client’s operations (e.g. design and development of computer software), while others can be relatively cheap and less significant for the user (e.g. software for use with mobile phones).

3. The signs

WHATSAPP	WhosApp
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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a word mark, ‘WHATSAPP’. The contested sign is also a word mark, ‘WhosApp’. In word marks, in principle, the word itself is protected, not its written form. Therefore, in the present case, it is irrelevant whether the word marks are depicted in title case or upper case letters.

The signs have no meaning for the public at large. Therefore, for that part of the relevant public, they have no elements that could be considered clearly more distinctive than other elements and, as a whole, must be seen as being of average distinctiveness for all the goods and services concerned. However, it is reasonable to assume that business customers will understand the word ‘app’ as meaning ‘application’ in both signs. Considering that some of the relevant goods are computer software programs/applications and some of the relevant services are directly related to those goods (e.g. design and development of computer software), this element is non-distinctive for these goods and services for that part of the relevant public. For the remaining goods and services, this element has a normal degree of distinctiveness.

Finally, being word marks, neither of the signs has any elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘WH**SAPP’. In addition, the signs coincide in the fact that they are both one-word marks and are of a similar length (eight versus seven letters). However, they differ in their remaining (middle) letters, namely ‘AT’ in the earlier mark and ‘O’ in the contested sign. Considering that both marks are word marks, and contrary to the applicant’s argument, for the purpose of this comparison, it is irrelevant that the earlier mark is used in green, while the contested sign is used in blue.

Furthermore, the beginnings of the conflicting marks are identical. In that respect, it must be pointed out that consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, for the public at large and for the business customers in respect of the goods and services for which the element ‘app’ has a normal degree of distinctiveness, the signs are similar to an average degree. Furthermore, the signs are also similar to an average degree for the business customers in respect of the goods and services for which the element ‘app’ is non-distinctive, as, in this case, the signs still have in common three out of four or five letters in the same order in their distinctive elements (namely ‘WHATS’ in the earlier mark and ‘WHOS’ in the contested sign). In addition, these elements also have identical beginnings and endings. Finally, the element ‘app’, although non-distinctive per se for some of the goods and services, contributes to the similar visual impressions of the signs, in particular as regards their structures and lengths.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘WH**SAPP’, present identically in both signs. The pronunciation differs in the sound of the letters ‘AT’ of the earlier mark and ‘O’ of the contested sign, which have no counterparts in the opposing sign.

Therefore, for the public at large and for the business customers in respect of the goods and services for which the element ‘app’ has a normal degree of distinctiveness, the signs are similar to an average degree. Furthermore, the signs are also similar to an average degree for the business customers in respect of the goods and services for which the element ‘app’ is non-distinctive, as the signs still coincide in the sound of the letters ‘WH**S’, present identically in the same order in the distinctive elements of both signs. Finally, as seen above, the element ‘app’, although non-distinctive per se for some of the goods and services, contributes to the similar aural impressions of the signs, in particular as regards their lengths, rhythms and intonations.

Conceptually, for a part of the relevant public, that is, the public at large, neither of the signs has a meaning. Since a conceptual comparison is not possible, for that part of the relevant public the conceptual aspect does not influence the assessment of the similarity of the signs.

However, business customers, although not attributing to the signs as a whole any particular meaning, are likely to understand the word ‘app’ as meaning ‘application’ in both of the signs. To that extent, the signs are conceptually at least highly similar in respect of the goods and services for which the element ‘app’ is distinctive, while, in respect of the remaining goods and services for which that element is non-distinctive, the signs are at most similar to a low degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 non‑distinctive element in the mark for a part of the relevant public and some of the goods and services, 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 contested goods and services are partly identical and partly similar to the goods and services for which the earlier mark is registered.

The signs have in common six out of their seven or eight letters and have identical beginnings and endings, namely ‘WH’ and ‘SAPP’, respectively. Moreover, the signs are both one-word marks and are of similar lengths. The difference between the signs is limited to the letters ‘AT’ versus ‘O’, which are placed in the middle of the signs, preceded and followed by the coinciding letters. The Opposition Division considers that the abovementioned letters, placed in the middle of the signs where the consumers’ attention is not normally focused, are not sufficient to guarantee that consumers will safely distinguish between the signs and, therefore, will not be sufficient to exclude the possibility of a likelihood of confusion. Apart from the difference in the letters ‘AT’ versus ‘O’, there are no additional elements or features to assist consumers in differentiating between the signs. This also applies in relation to the part of the relevant public for which the element ‘app’ will be non-distinctive in both signs for some of the goods and services. The signs still coincide in three out of four or five letters/sounds, which are present identically in the same order in the distinctive elements of both signs. In addition, they have identical beginnings. Finally, the element ‘app’, although not distinctive for some of the goods and services, contributes to the similar overall impressions created by the signs.

Taking into account the above, as well as the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, it is considered that the overall impression of the signs on the part of the relevant public will be that of similarity.

In its observations, the applicant argues that there are many trade marks that include the element ‘app’. In support of its argument, the applicant refers to 1 558 word marks registered worldwide. Furthermore, the applicant also asserts that every piece of software that can be found in online stores, such as the Apple Store or Google Play, is referred to as an ‘app’. However, the applicant failed to support its assertion.

The Opposition Division notes that the existence of a number of trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers, and especially the relevant Spanish-speaking public, have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘app’.

With regard to the applicant’s claim that all software applications available through online stores are referred to as an ‘app’, first, the applicant failed to support its claim with any evidence. Second, for the sake of completeness, the mere fact that the element ‘app’ may be used to make up the names of different applications does not necessarily mean that this element on its own or in combination with any letters will be understood and perceived by the Spanish-speaking public as meaning ‘application’.

Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 986 514. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) EUTMR.

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

Ric WASLEY

Sandra KASPERIUNAITE

Vita VORONECKAITĖ

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.